judgement:
ivil Appeal No. 562 of 1964.
Appeal by special leave from the judgment and order dated ' February 7, 8, 1963, of the Bombay High Court (Nagpur Bench) at Nagpur in Appeal No. 115 of 1962.
M. C. Setalvad, N. L. Belekar, R. D. Awade and A. G. Rat naparkhi, for the appellant.
N. C. Chatterjee, V. section Sawhney, section section Khanduja, section K. Manchanda and Ganpat Rai, for respondent No. 1. 850 The Judgment of the Court was delivered by Mudholkar J.
The question which arises for consideration in this appeal by special leave from the judgment of the Bombay High Court is whether respondent No. 1 Dr. D. P. Meshrarn was entitled to be a candidate for election to the Maharashtra Legislative Assembly from constituency No. 190 of Nagpur III, a constituency reserved for candidates from scheduled castes.
The appellant and respondents 1 to 4 were candidates duly nominated for election to the Assembly from the aforesaid constituency.
The poll was taken on February 27, 1962 and respondent No. 1 who had polled the highest number of votes was declared elected.
The appellant thereupon preferred an election petition before the Election Commission, the main allegations in which were (a) that respondent No. 1 having embraced Buddhism on March 17, 1957 had ceased to be a member of a Scheduled Caste within the meaning of the Constitution (Scheduled Castes) Order, 1950 and was thus disentitled from being a candidate for the particular seat and (b) that respondent No. 1 was guilty of several corrupt practices.
The Tribunal held that the "Corrupt practices alleged against respondent No. 1 were not established.
It, however, came to the conclusion that respondent No. 1 had embraced Buddhism as alleged by the appellant and was, therefore, not eligible for being a candidate for election from the reserved constituency.
Upon this ground the Tribunal set aside the election of respondent No. 1.
It may be mentioned that the appellant had made a further prayer to the effect that he should be declared elected to the seat; but this prayer was not granted by the Tribunal on the ground that he was not the only other candidate for election and, therefore, it cannot be said how the votes which respondent No. 1 had secured would have been distributed among the remaining candidates.
Aggrieved by the decision of the Tribunal respondent No. 1 preferred an appeal before the High Court of Bombay.
The only question which was urged before the High Court was regarding the alleged conversion of respondent No. 1 to Buddhism.
On that question the High Court reversed the finding of the Tribunal and held that the fact had not been established by evidence.
The High Court, therefore, upheld the election of respondent No. 1.
In support of his contention that respondent No. 1. was con verted to Buddhism on March 17, 1957 the appellant had ,adduced evidence of P.W. 9 Ramrattan Janorkar, P.W. 2 Akant 851 Mate, P.W. 5 Devaji Bhagat and P.W. 10 Wasudeo Dongre.
Ramrattan who claims to be a Buddha has said that he presided over a meeting held at Lashkari Bagh, Nagpur, two or three days after the Holi festival of the year 1957 at which a mass conversion of persons belonging to Scheduled Castes to Buddhism took place.
He named ten persons who, according to him, had been converted at that meeting, one of them being respondent No. 1.
Amongst others named by him were P.W. 2 Akant Mate, P.W. 5 Devaji Bhagat and P.W. 10 Wasudeo Dongre.
These three persons have corroborated the evidence of Ramrattan.
We have been taken through the evidence of these witnesses and though there may be some contradictions on minor points on the whole their evidence is consistent and has a ring of truth in it.
Moreover, the Tribunal which heard and saw the witnesses depose has believed in their veracity.
The High Court has, however, not chosen to accept their evidence mainly on the ground that these witnesses belong to a party which is opposed to respondent No. 1 and his party.
It is not disputed before us that these witnesses as well as respondent No. 1 were members of the Republican Party of India founded by the late Dr. Ambedkar and that some time after his death there was rift in the party as a result of which two groups were formed.
The leader of one of these groups in Haridas Awade and that of the other is Khobargade.
Respondent No. 1 belongs to the group headed by Khobargade while the appellant and the witnesses belong to the other group.
We agree with the High Court that we should not lose sight of this fact.
In our opinion, however, there are good grounds for accepting the evidence.
In the first place there is the fact, which is admitted by respondent No. 1 himself, that a mass conversion of a very large number of persons belonging to the Scheduled Castes to Buddhism took place at Nagpur on October 14, 1956 at a meeting which was presided over by Dr. Ambedkar.
What took place at that meeting is set out in exhibit 66 which gives 'an account of the proceedings.
It says that about 5 lakhs of persons attended the meeting.
At that meeting Dr. Ambedkar was present along with Rev. Mahesthavir Chandramani who is a Bhikku.
The Bhikku made Dr. Ambedkar and Mrs. Ambedkar recite the three refuges (Thrisathi) and five precepts in Pali, after which both of them garlanded the idol of Lord Buddha which had been installed in the pandal where Dr. and Mrs. Ambedkar, the Bhikku and other prominent people were sitting.
Dr. and Mrs. Ambed 165 11 852 kar then took 22 vows, which apparently he had himself prepared.
Thereafter the mass ordination took place at which those who, wished to be converted recited the three refuges three times.
This event had attracted attention throughout the country and was given wide ,publicity, by the press which was well represented at the meeting.
Respondent No. 1 has admitted that he was a member, ,of Dr. Ambedkar 's party at that time and though he could not attend the conversion ceremony he had not. dissociated himself, from it.
According to him the reason why he did not attend thee ceremony was that he was then, busy with,, making arrangements. at the, water works.
for the supply of water to the lakhs of people, most of whom had come from the neighbouring villages to attend the ceremony.
It is in the evidence of witnesses that at least lakhs of persons belonging to the Scheduled Castes were converted to Buddhism at that meeting and that the work of conversion went on even, after October 14, 1956 for quite some time.
Another factor to be borne in mind is that prominent persons belonging to there Scheduled Castes were converted to Buddhism and it would be highly improbable, that respondent No. 1 who was a prominent member, of the.
Scheduled Castes in Nagpur and a follower of Dr., Ambedkar would have remained aloof from the movement started by Dr. Ambedkar.
The main object of Dr. Ambedkar was to secure for the members of the Scheduled Castes an honorable place in society and he felt that the various disabilities placed upon members of these castes were due to the fact that in Hindu religion to which they belonged, they had been accorded the lowest rank in society with the result that they had come to be regarded as untouchables.
Undoubtedly, the caste system has virtually come to be regarded as an essential feature of Hindu society and, therefore, Dr. Ambedkar felt that the only way open to members belonging to the lowest group was to sever their connection completely from such a society.
He found that Buddhism, the way or path of peace, not only, offered solace to the spirit but also social equality to all its members.
Dr. Ambedkar was the unquestioned leader of the Scheduled Castes, at any rate in Maharashtra.
It would, therefore, not be unreasonable to infer that those who had accepted his leadership and those who in addition held prominent places amongst people belonging to the Scheduled Castes should follow Dr. Ambedkar and renouncing Hinduism embrace like him, Buddhism.
If this probability is borne in mind the evidence of the witnesses who have deposed to the fact of the actual conversion of respondent No. 1 to Buddhism would become more easily acceptable.
853 That, however, is not all.
Corroboration of this evidence was sought to be supplied by the appellant from the conduct of respondent No. 1 subsequent to his conversion.
For this purpose he has relied upon three matters: One is the signing of a declaration by respondent No. 1 along with some other persons to the effect that he had embraced Buddhism and that he, therefore, ceased to be any longer a member of the Scheduled Castes; the second is a wedding invitation subscribed to, amongst_others, by respondent No. 1 on which the picture of Lord Buddha is inscribed: and the third is the conversion of a Shiva temple situate near the appellant 's house to a Buddha temple.
The declaration is exhibit 42 and is dated July 5, 1957.
It is to the following effect: "To whomsoever it may concern: We, the following signatories, do hereby affirm that we embraced Buddha religion on 17 3 1957 and no longer since remain Harijans.
" Then follow the names of ten persons, including P.W. 2 Akant Mate, P.W. 5 Devaji Bhagat and P.W. 10 Dongre.
Each of them has signed therein against his name.
The reason why this declaration came into existence is, according to the appellant, the following: Elections had taken place to the Nagpur Corporation and a meeting was held on July 5, 1957 for selection of six additional members.
One of the Corporators, Mr. Udhoji, raised a point of order to the effect that no member of the Scheduled Castes having been elected to the Corporation a person belonging to the Scheduled Castes was required to be selected under the provisions of the Nagpur Municipal Corporation Act.
Respondent No. 1 was one of the persons who had already been elected to the Corporation and was present at the meeting.
He, however, did not contest the statement of Mr. Udhoji to the effect that no person belonging to the Scheduled Castes had been elected.
Apparently, the point of order was disallowed and selection of six members, none of whom belonged to the Scheduled Castes, took place.
Immediately thereafter the declaration referred to above was signed by ten persons, including respondent No. 1, who had all been elected as members of the Municipal Corporation at the Corporation election.
This was filed along with the writ petition presented before the High Court in which the selection made at the meeting of July 5, was sought to be quashed on the ground 854 that no person belonging to a Scheduled Caste had been selected.
Respondent No.1 admits that he did sign this declaration but in his written statement the reason given by him is that he did so under political pressure.
In his evidence, however, he has given a different explanation.
This is what he has said : "Akant Mate came there with some writing and told us that it was the directive of the Scheduled Castes Federation that members elected on its tickets should sign it.
I do not know how he got that directive from the Federation, and from whom he got it.
The writing was in English and I signed upon it.
Akant Mate told me that I should sign on the document, he would go and get signatures of other Corporators and give it in the Corporation office.
I could not myself read the English typewritten material.
Akant Mate told me that the President of the meeting gave the ruling in the information by the Commissioner that I and Mate ' were members of the Scheduled Caste and that if this were not so, we would be able to get one more member and, therefore, I should sign on the document.
My consent was not taken for filing the declaration in the High Court.
I was not a party to the proceedings in the High Court, in connection with which the declaration was taken.
" What he has said is, in substance, that he was duped by Akant Mate.
There is thus a variation between his pleading and the proof adduced and in the circumstances we will be justified in rejecting his explanation.
Once the explanation is rejected the declaration must be taken into account as a piece of corroboration of the fact that he had ceased to be a Hindu as he had been converted to Buddhism.
Respondent No. 1 does not deny that the wedding invitation placed on record by the appellant bears his name as one of the hosts.
The invitation pertains to the wedding of his daughters Lalita and Pushpa Lata and their respective bridegrooms were Sirish and Yashwant Rao.
At the top of the invitation are the usual words "Subh Langna" (auspicious wedding).
Then there is a picture of Lord Buddha followed by the inscription "May victory and prosperity by yours Obeisances to Buddha".
It is well known that in Hindu weddings the invitations issued in an Indian language the picture of the Kuladaivata is generally printed 855 and the blessings of the Kuladaivata are invoked.
Had respondent No. 1 considered himself to be a Hindu he would have followed the usual practice.
No doubt, sophisticated people, though still belonging to Hindu religion, have discarded the practice of printing the picture of the family deity on wedding invitations and of invoking the blessings of the deity.
Respondent No. 1 does not suggest that he belongs to that class.
Indeed, if that were so, there would have been no occasion to print the picture of Lord Buddha and seek his blessings.
In this invitation the picture of the Kuladaivata was substituted by that of Lord Buddha.
This is more consistent with Respondent No. 1 having become a Buddhist than with his remaining a Hindu.
According to respondent No. 1 he did not know till after the Sakshyagandh (engagement) was over that either of the bride grooms was a Buddhist.
He says that a week before the marriages someone from the side of the bridegrooms met him and told him that the weddings had to be performed according to the Buddhist ritual and if he was not agreeable the engagements would be broken off.
It was then that he first thought that the bridegrooms were Buddhists.
However, he did not think it proper to break off the engagements.
Now, if he were still a Hindu belonging to the Scheduled Castes it is unlikely that he would have reconciled himself with the idea of giving his daughters in marriage to non Hindus, more particularly when the bridegrooms ' side insisted on following the Buddhist ritual.
He has, no doubt, tried to give an explanation for this curious conduct by saying that he treated Lord Buddha as the "11th (sic) incarnation" and that is why he had Lord Buddha 's picture printed on the wedding invitation.
That explanation cannot be easily accepted.
As regards the third circumstance there is the evidence of Budhaji Godbole, P.W. 11, and Kisan Shende, P.W. 14, in addition to that of the appellant.
According to them respondent No. 1 converted the Shiva Temple in Gautamnagar into Buddha temple on June 6, 1959 and installed Lord Buddha 's image at a function over which he presided and at which Dr. Y. B. Ambedkar, President of Buddhist Society was present.
Respondent No. 1 had admitted most of the facts, as pointed out by the High Court itself.
The variation between the contentions of the parties is this.
According to respondent No. 1 there was a Shiva Temple on a plot of land in Gaddigudam at Nagpur.
While laying a new road in the year 1932 or so this plot was 856 taken over by the Nazul authorities and another plot was given for the Shiva Temple in exchange.
But according to him, no Shiva Temple was at all constructed or Shiva Ling installed therein.
This is obviously untrue.
He admits that this plot " was managed by a Panch Committee" of which he was a member.
For, without constructing a Shiva Temple on the plot there could have been nothing to manage by the Panch Committee.
No doubt, he says that while he was Chairman of that Committee in the year 1959 or 1960 it was decided to construct a Shiva Temple thereon.
But it is difficult to believe that the people of the locality would have waited for 28 years for taking the decision.
He admits that a temple dedicated to Lord Buddha was constructed thereon as alleged by the appellant and his witnesses.
It seems clear that the decision of the committee to which he refers related to the construction of this temple and not to a Shiva Temple which was already there.
The evidence led on behalf of the appellant was to the effect that at the cere mony held on June 6, 1959 the idol of Lord Buddha was in stalled above the Shiva Linga, presumably meaning thereby that the Shiva Linga was overlaid with earth or bricks and on the top of it the image of Lord Buddha was installed.
Referring to the evidence of Shende the High Court has observed: "The witness however does not say that he saw the removal of the old image of Lord Shiva or the Ling and the Pinda which were already there.
On the other hand it is the case of Meshram that the Corporation had already given another plot to which the Shiva Mandir had long before been shifted and since this plot was idle, he gave it for the installation of Buddha 's idol.
" The observation of the High Court underlined by us is apparently based on a misreading of the evidence of respondent No. 1 and also ignores his plea on the point in his written statement.
It is not his case that two plots were allotted for a Shiva Temple one of which was vacant.
His case, as already stated, was that the plot given in exchange for the old one was never utilised and not that two plots were given, one of which was utilised.
Again, the High Court has failed to appreciate properly the evidence of Budhaji Godbole.
What he has said is this "One house away from the house of respondent No. 1 is a plot of land on which then stood a Shiva Temple.
This plot stood in the name of the respondent 857 No. 1.
In that temple was Ling and Pind of Shiva.
From 6 6 1959 this temple has now become Buddha Vihar.
On that day, the Ling and Pind were put underground and at that place was installed idol of God Buddha The installation of the image of God Buddha was done by Bhaiyasaheb Ambedkar.
It was the respondent No. 1 who was the principal man in converting the Shiva temple into a Buddha Vihar.
" There is no suggestion in his cross examination that this witness had no personal knowledge of what he had deposed to.
Since he has clearly spoken about the burial of the Shiva Linga and the installation of the image of Lord Buddha on top of it, he must be understood to mean that this was what happened in his presence and also in that of respondent No.1.
Incidentally, it may be stated that this witness is also a convert to Buddhism.
A reference may also be made to the evidence of the other witness Kisan Shende.
The relevant portion of his deposition is as follows : "The respondent No. 1 was the President of the function.
The idol of Buddha was installed by Bhaiyasaheb Ambedkar on an ota which covered the old Ling and Pind representing God Shiv This part of evidence of this witness has not been challenged in cross examination.
There is no reason why this evidence ought not to be accepted, particularly when some of the essential facts deposed to by the witnesses have been admitted by respondent No. 1 himself.
If we accept this evidence then the only conclusion which can emerge is that respondent No. 1 had ceased to be a Hindu.
For, however great the admiration or regard a Hindu may have for Lord Buddha, he would shudder at the idea of desecrating a Shiva Linga in this manner or even of converting what was once a Shiva temple into a Buddhist temple.
In our opinion, this would be the strongest circumstance corroborating the evidence of eye witnesses regarding the conversion of respondent No. 1 to Buddhism.
It is contended on behalf of respondent No. 1 that there is a register of persons who had been converted to Buddhism and that the first respondent 's name does not appear there.
It is true that R.W. 5 Waman Godbole speaks of some register but his evidence clearly shows that the register is not regularly maintained nor are the signatures of persons who had been converted 858 taken according to the dates of conversion.
There is nothing to show that it was obligatory on every person who had been converted to sign in the register.
Moreover, a signature in such a register would at best be only a piece of evidence of the fact of conversion and nothing more.
Absence of a person 's signature in the register would not necessarily negative his being at all converted to Buddhism.
Then it is said that only Bhikku is entitled to convert non Buddhists to Buddhism.
There is abundant evidence on record that at the conversion ceremony held on October 14, 1956 Dr. Ambedkar had told the new Buddhists that any one who had become a Buddhist could admit others to the fold of Buddhism.
Apart from that we have been shown no authority to the effect that a person cannot become a Buddhist unless he is converted to Buddhism by a Bhikku.
Buddhism was in essence also a protest against orthodoxy and the power of the priesthood.
It would, therefore, be strange to say that for a non Buddhist to become a Buddhist strict compliance with rituals is necessary.
It is in evidence that at every conversion three vows had been repeated thrice.
Five precepts had also to be repeated by those who offered them selves for conversion.
This was exactly what was done by Dr. Ambedkar, his wife and others at the mass meeting on October 14, 1956 and it is not suggested that what they did was inadequate and so they cannot be deemed to have embraced Buddhism from that date.
It is, therefore, futile to say that others who went through the same procedure had not become Buddhists merely because no Bhikku had officiated at the function.
What cl.
(3) of the Constitution (Scheduled Castes) Order, 1950 contemplates is that for a person to be treated as one belonging to a Scheduled Caste within the meaning of that Order he must be one who professes either Hindu or Sikh religion.
The High Court, following its earlier decision in Karwade vs Shambhakar(1) has said that the meaning of the phrase "professes a religion" in the aforementioned provision is "to enter publicly into a religious state" and that for this purpose a mere declaration by person that he has ceased to belong to a particular religion and embraced another religion would not be sufficient.
The meanings of the word "profess" have been given thus in Webster 's New Word Dictionary : "to avow publicly; to make an open declaration of;. to declare one 's belief in : as, to profess (1) I.L.R. 859 Christ.
To accept into a religious order.
" The meanings given in the Shorter Oxford Dictionary are more or less the same.
It seems to us that the meaning "to declare one 's belief in : as to profess Christ" is one which we have to bear in mind while construing the aforesaid order because it is this which bears upon religious belief and consequently also upon a change,in religious belief.
It would thus follow that a declaration of one 's belief must necessarily mean a declaration in such a way that it would be known to those whom it may interest.
Therefore, if a public declaration is made by a person that he has ceased to belong to his old religion and has accepted another religion he will be taken as professing the other religion.
In the face of such an open declaration it would be idle to enquire further as to whether the conversion to another religion was efficacious.
The word "profess" in the Presidential Order appears to have been used in the sense of an open declaration or practice by a person of the Hindu (or the Sikh) religion.
Where, therefore, a person says, on the contrary, that he, has ceased to be a Hindu he cannot derive any benefit from that Order.
Finally it is argued that the word Hindu is comprehensive enough to include a Buddhist and in this connection our attention is invited to Explanation 11 to cl.
(2) of article 25 of the Constitution.
Clause (1) of article 25 recognises, amongst other things, freedom to practise and propagate religion.
Sub clause (b) of cl.
(2) runs thus : "Nothing in this article shall affect the operation of any existing law or prevent the State from making any law (b) providing for social welfare and reform or the throwing open of Hindu religious institutions of a public character to all classes and sections of Hindus.
" Explanation II ' reads thus : "In sub clause (b) of clause (2), the reference to Hindus shall be construed as including a reference to persons professing the Sikh, Jaina or Buddhist religion, and the reference to Hindu religious institutions shall be construed accordingly.
" The definition of Hindu is expanded for the special purposes of sub cl.
(b) of cl.
(2) of article 25 and for no other.
Paragraph 3 of the Constitution (Scheduled Castes) Order reads thus 860 .lm15 "Notwithstanding anything contained in paragraph 2, no person who professes a religion different from the Hindu or the Sikh religion shall be deemed to be a member of a Scheduled Caste.
" If it was intended that the word "Hindu" used in this paragraph should have a wide meaning similar to that in Explanation 11 just quoted the re would have been no need to make a mention of the Sikh religion.
From the fact that a special mention is made of the Sikh religion it would follow that the word "Hindu" is used in the narrower sense of the orthodox Hindu religion which recognises castes and contains injunctions based on caste distinctions.
For the foregoing reasons we are satisfied that respondent No. 1 had ceased to be a Hindu at the date of his nomination and that consequently he was ineligible to be a candidate for election from a constituency reserved for members of Scheduled Castes.
In the circumstances the Tribunal was right in setting aside his election.
Accordingly we allow the appeal, set aside the judgment of the High Court and restore that of the Tribunal.
Costs throughout will be borne by respondent No. 1.
Appeal allowed.

summary/full:
The appellant challenged the election of the 1st respondent to the, Legislative Assembly on the ground that the latter had embraced Buddhism and had ceased to be a member of a Scheduled caste within the meaning of the Constitution (Scheduled Castes) Order, 1950, and was thus disentitled from being a candidate for the particular seat.
The Election Tribunal upheld the contention and set aside the election.
On appeal, the High court held that the conversion of the 1st respondent to Buddhism had not been established by evidence and upheld his election.
On appeal to the Supreme Court, HELD : (i) The word "profess" in the Order means "to declare one 's belief in".
A declaration of one 's belief must necessarily mean a declaration in such a way that it would be known to those whom it may interest.
Therefore, if a public declaration is made by a person that he has ceased to belong to his old religion and has accepted another religion he will be taken as professing the other religion.
It is unnecessary to enquire further as to whether the conversion to another religion was efficacious.
[859 A D] (ii)No doubt the definition of "Hindu" contained in the Explanation to Article25 is expanded but that is only for the purposes of sub cl.
(2) of cl.
(2)of that Article and for no other.
The mention of Sikh religion in Para 3of the Order clearly shows that the word "Hindu" in the order is used in the narrower sense of orthodox Hindu religion which recognises castes and contains injunctions based on caste distinctions.
It is not comprehensive enough to include Buddhism.
[859 H; 860 B C] Karwade vs Shambhakar, I.L.R. over ruled.


judgement:
Appeal No. 830 of 1963.
Appeal by special leave from the judgment and decree dated March 3, 1960 of the Allahabad High Court in Special Appeal No. 3 of 1956.
G. section Pathak and section P. Varma, for the appellants.
781 O.P. Rana, for the respondents.
K. Srinivasan and R. Gopalakrishnan, for the intervener.
The Judgment of the Court was delivered by Shah J.
The appellants public limited Company having its registered office at Calcutta, was, with effect from October 5, 1946, appointed sole agent for sale of goods manufactured by the Swadeshi Cotton Mills Company Ltd. On March 20, 1952, the Sales Tax Officer, Kanpur issued a notice under section 21 of the U.P. Sales Tax Act, 1948 calling upon the appellant Company to file a return of its turnover for the assessment year 1948 49 on the ground that the turnover had escaped assessment.
On March 31, 1952, the Sales Tax Office. made a "best judgment" assessment and determined the taxable turnover of the appellant Company, at Rs. 50 lakhs for the year 1948 49 and determined the appropriate tax liability.
In the appeal to the Judge (Appeals) Sales Tax, the order passed by the Sales Tax Officer, was set aside, that authority holding that the appellant Company was not a dealer within the meaning of section 2(c) of the Act.
But the order of the appellate authority was set aside by the Judge (Revisions) Sales Tax, by order dated March 28, 1955 and the case was remanded to the Sales Tax Officer for "fresh assessment".
In the view of the Judge (Revisions) Sales Tax, it was necessary to determine "the ownership of the goods at the time of their sale".
The Sales Tax Officer then issued a notice calling, upon the appellant Company to produce its books of account and other relevant documents on July 23, 1955 for the purpose of assessment for the year 1948 49.
The appellant Company contended that as the original assessment under section 21 had been set aside by the Judge (Revisions) Sales Tax, no proceeding in connection with that assessment was pending and re assessment was barred because more than three year had elapsed since the end of the year of assessment.
The Sales Tax Officer rejected the contention of the appellant Company and insisted that the books of account and other documents be produced as directed earlier.
The appellant Company then petitioned on September 2, 1955 to the High Court of Allahabad under article 226 of the Constitution for a writ in the nature of prohibition restraining the Sales Tax Officer, Kanpur, from proceeding with the assessment of the appellant Company for the assessment year 1948 49 and for a writ of certiorari quashing the order dated September 2, 1955 of the Sales Tax Officer, Kanpur and the proceeding taken for re assess 782 ment in pursuance thereof.
Chaturvedi J., held that assessment sought to be made by the Sales Tax Officer pursuant to the order of the Judge (Revisions) Sales Tax "was clearly barred by the law of limitation" prescribed in that behalf by section 21 of the U.P. Sales Tax Act.
It was in the view of the learned Judge immaterial whether assessment was being made by the Sales Tax Officer suo motu or under the direction of a superior authority if at the time of making the re assessment the period prescribed by section 21 had expired.
The order passed by Chaturvedi J., was reversed in appeal by a Division Bench of the High Court.
The High Court held that the Sales Tax Officer was competent in view of the order of remand which directed "fresh assessment" to commence fresh assessment proceedings against the appellant Company and in commencing and continuing those proceedings he was acting in compliance with the directions given under sections 9 and 10 of the Act which he was bound to carry out and to such assessment proceedings the period of limitation prescribed by section 21 of the Act did not apply.
Against the order passed by the High Court reversing the order passed by Chaturvedi J., this appeal has been preferred with special leave.
The material provisions of the U.P. Sales Tax Act are briefly these : section 9 conferred a power upon the designated authority to entertain an appeal against the order passed by the Sales Tax authority, and by sub section
(3) of section 9 it was provided: "The appellate authority may, after giving the appellant a reasonable opportunity of being heard, (a) confirm, reduce, enhance or, annul the assessment, or (b) set aside the assessment and direct the assessing authority to pass a fresh order after such further inquiry as may be directed, or (c) .
By sub section
(3) of section 10 as it stood at the relevant time, it was provided: " The Revising Authority may in his discretion at any time suo motu or on the application of the Commissioner of Sales Tax or the person aggrieved, call for and examine the record of any order made by any Appellate or Assessing Authority under this Act, for the purpose of satisfying himself as to the legality or propriety of such order and may pass such order as he thinks fit: 783 Provided that no such application shall be entertained in any case where an appeal lay against the order, but was not preferred.
" Section 21 as it stood at the relevant time provided: "Where the whole or any part of the turnover of a dealer has, for any reason, escaped assessment to tax in any year, the Assessing Authority "may, at any time within three years from the expiry of such years, and after issuing notice to the dealer and making such enquiry as may be necessary, assess the tax payable on such turnover." In the view of the High Court section 21 which imposed upon the Assessing Authority duty to exercise his power to assess turnover which escaped assessment within three years from the end of the year of assessment applied only to the order which the Assessing Authority made suo motu : where, he was directed to, proceed by an order of the appellate or revisional authority under sections 9 and 10 of the Act to re assess, the period of limitation has no application.
In our view the High Court was in error in so limiting the operation of section 21.
That section imposes a restriction upon the power of the Sales Tax Officer: that officer is competent within three years next succeeding the date to which the tax relates to assess tax payable on the turnover which has escaped assessment.
But the section does not provide expressly, nor is there any implication, that the period within which re assessment may be made applies only to those cases where the Sales Tax Officer acts on his own initiative and not pursuant to the directions of the appel late or the revisional authority.
In our view the principle of the judgment of the Privy Council in Commissioner of Income tax, Bombay Presidency and Aden vs Khemchand Ramdas (a firm) (1) applies to this case.
In Khemchand 's case(1) the tax payer was assessed as a registered firm to income tax by order dated January 17, 1927 for the year 1926 27 under section 23(4) of the Income tax Act.
Under the Act as it then stood, a registered firm was not liable to pay super tax and was liable to income tax at the maximum rate.
On January 9, 1928 the Commissioner of Income tax In exercise of powers of revision under section 33 of the Act issued a notice to the assessee requiring him to show cause why the order of the Income tax Officer granting registration of the firm and assessing it on that footing should not be set aside, and by order dated February 13, 1928 ordered cancellation of registration and (1) (1938) L.R. 65 T.A. 236.
784 .directed the Income tax Officer to take necessary action thereupon.
On May 4, 1929, the Income tax Officer assessed to super :tax the assessee on the footing that its registration was cancelled.
authority of the Income tax Officer to assess was challenged.
It was held by the Judicial Committee that as the Income tax Officer had made the order imposing super tax on the assessee more than one year after the earlier demand in respect of income tax, the ,order was without jurisdiction.
The Judicial Committee pointed out that once a final assessment has been made, it cannot be ,reopened by the Income tax Officer of his own motion, or at the direction of the Commissioner exercising his powers under section 33 of the Indian Income tax Act, 1922, except in the circumstances and within the time prescribed by sections 34 and 35 of the Act.
They observed that sections 34 and 35 were exhaustive and prescribed the only circumstances in which, and the only time in which, such fresh assessments could be made and fresh notices of demand could be issued.
As the Income tax Officer took no fresh step within one year under the statute, he was "hopelessly out of time whichever of the two sections was applicable".
But the order of the High Court must still be confirmed, because during the pendency of the proceeding in the High Court section 21 was extensively amended.
The section as amended by Act 19 of 1956 from May 28, 1956 reads as follows: "(1) If the assessing authority has reason to believe that the whole or any part of the turnover of a dealer has, for any reason, escaped assessment to tax for any year, the assessing authority may, after issuing notice to the dealer, and making such enquiry as may be necessary, assess or re assess him to tax: Provided that the tax shall be charged at the rate at which it would have been charged had the turnover not escaped assessment, or full assessment, as the case may be.
Explanation.
Nothing in this sub section shall be deemed to prevent the assessing authority from making an assessment to the best of its judgment.
(2) No order of assessment under sub section (1) or under any other provision of this Act shall be made for ,any assessment year after the expiry of four years from the end of such year.
Provided that where the notice under sub section (1) has been served within such four years the assessment or re assessment to be made in pursuance of such 785 notice may be made within one year of the date of the service of the notice even if the period of four years is thereby exceeded: Provided further that nothing contained in this section limiting the time within which any assessment or re assessment may be made, shall apply to an assessment or re assessment made in consequence of, or to give effect to, any finding or direction contained in an order under section 9, 10, or 11.
Explanation.
Under the terms of section 21 (1) as amended where the assessing authority has reason to believe that any part of the turnover has or any reason escaped assessment to tax for any year, he may make Assessment within four years from the end of the year in which the turnover has escaped assessment.
The rule is, however, subject to two exceptions: (i) when notice under sub section
(1) has been served within four years the assessment or re assessment to be made in pursuance of such notice may be made within one year of the date of the service of the notice even if the period of four years is thereby exceeded; and (ii) that, nothing contained in s 21 which limits the time within which any assessment or re assessment is to be made applies to assessment or re assessment made in consequence of, or to give effect to, any finding or direction contained in an order under sections 9, 10 or 11.
Therefore where the Sales Tax Officer proceeds in pursuance of a direction given by the appellate or revising authority or under an order made by the High Court in a reference under section II, the period of limitation prescribed by sub section
(2) of section 21 does not apply.
This section was incorporated in the Act by section 15 of the amending Act, which enacted: "For section 21 of the Principal Act the following shall be and be always deemed to have been substituted: " The amended section was therefore to be deemed to be in operation at all material times since the enactment of the U.P. Sales Tax Act 15 of 1948.
The Legislature has given a clear retrospective operation to the amended section as from the date on which the principal Act came into operation, and correctness of the order of the Sales Tax Officer holding that there was no bar of limitation to the making of a fresh assessment pursuant to the order of the appellate or revising authority had to be adjudged in the light of section 21 as amended by Act 19 of 1956.
The words used by the Legislature are precise and admit of only one interpretation that 786 proceedings taken for assessment or re assessment in consequence of, or to give effect to an order of the appellate or revising authority or an order passed by the High Court under section 11 may be taken notwithstanding the expiry of the period prescribed by sub section
(2) of section 21.
Mr. Pathak on behalf of the appellant Company pleaded that even if that be the true interpretation of section 21 as amended, the section could only apply to proceedings which were pending at the date on which the Act was amended, but in law no proceeding was pending because the Judge (Revisions) Sales Tax had no power to direct after the expiry of the period prescribed under section 21 as it originally stood to make a fresh assessment in respect of the year 1948 49.
There are two clear answers to this plea, either of which is sufficient to reject it.
The revisional authority had under section 10(3) power to make such order as he thought fit after calling for and examining the record of any order made by an appellate or an assessing authority and after satisfying himself as to the legality or propriety of such order.
Even assuming that the revisional authority came to a conclusion which was erroneous in law, it was still an order which he had jurisdiction to make and that order unless set aside in a proper proceeding could not be ignored on the ground of lack of jurisdiction.
There was, therefore, a proceeding pending before the Sales Tax Officer in pursuance of the direction given by the Judge (Revisions) Sales Tax who had directed the Sales Tax Officer to make a fresh assessment.
Whether in pursuance of this direction, a fresh assessment could be made under section 21 before it was amended, need not detain us.
We are concerned with the jurisdiction of the revising authority to make the order that he did under the section as it stood amended, and not with the competence of the assessing authority to pass an order for assessment under the statute before it was amended.
The other ground is also equally decisive.
By section 15 of Act 19 of 1956, section 21 of the Act as amended, must be deemed to have been on the statute book on the date on which the revising authority passed his order, and under that amended provision the power of the assessing authority to assess or re assess pursuant to an order of the revising authority was not lost when the period prescribed by sub section 2 of section 21 for assessment or re assessment expired.
Under section 21, before it was amended, there could be no order of assessment or re assessment either by the Sales Tax Officer suo motu, or pursuant to the direction of the appellate or revising authority after the expiry of the period of three years prescribed by the statute, but under section 21 as amended, the power may be exercised by the Sales Tax Officer suo motu within four years for assessment or 787 re assessment.
That power could be exercised under the first proviso within a further period of one year if a notice under sub section
(1) was served within four years of the end of the year of assessment and without limit of time when it was made in consequence of, or to give effect to, any finding or direction contained in an order of the appellate or revisional authority or under an order of the High Court under section 11.
In initiating proceeding for assessment, pursuant to the direction of the revising authority, the Sales Tax Officer was, by virtue of section 21 as amended, subject to no restrictions as to the period within which the order of assessment could be made.
The order passed by the High Court must therefore be confirmed.
The appeal fails and is dismissed with costs.
Appeal dismissed.

dataset_name: IN-Abs

summary/full:
The sales tax officer made a best judgment assessment with respect to the turnover of the appellant under section 21 of the U.P. Sales Tax Act, 1948.
The order was set aside by the appellate authority.
The revisional authority revised the appellate order and remanded the case to the sales tax officer for making a fresh assessment.
When the officer issued a notice for assessment, in pursuance of that order, the assesee contended that as the original assessment had been set aside, no proceeding in connection with it was pending, and that reassessment was barred because, more than three years had elapsed since the end of the year of assessment.
The office,,rejected the contentions.
The assessee filed a writ petition in the High Court and it was allowed by a Single Judge.
The State appealed to the Division Bench.
While the appeal was pending, section 21 was extensively amended in 1956 and the legislature gave retrospective operation to the amended section.
As a result of the amendment, it was provided that when the officer proceeded in pursuance of a direction given by the revisional authority, no period of limitation applied.
The Division Bench, however, relied upon the unamended section and set aside the order of the Single Judge, holding, that even under the unamended section, no period of limitation applied when the assessing officer was directed to proceed by an order of the revisional authority.
The assessee appealed to the Supreme Court.
HELD:The appeal should be dismissed.
Though the High Court was in error in its interpretation of the unamended section on the principle of Commissioner of Income tax, Bombay Presidency and Aden vs Khemchand Ramdas, (L.R. 65 I.A. 236) still the order of the High Court must be confirmed because of the amendment of 1956.
The words used by the legislature in the amended section are precise and admit of only one interpretation, namely, that nothing contained in the section limits the time from the year of assessment within which proceedings should be taken for assessment or reassessment in consequence of or to give effect to an order of the revisional authority.
[783 E G; 784 D E; 785 H; 786 B] Even assuming that the amended section applied only to pending proceedings, when the revisional authority made an order after examining the record directing the assessing officer to make a fresh assessment, there was a proceeding pending before such officer in pursuance of such direction.
[786 E]


judgement:
Appeals No. 522 and 523 of 1962.
Appeals by special leave from the judgment and order dated November 30, 1960 of the Kerala High Court in A. section No. 233 of 1959 and O.P. No. 19 of 1952.
C.B. Agarwala, N. K. Anand and J. B. Dadachanji, for the appellant (in both the appeals).
G.S. Pathak and Sardar Bahadur, for the respondent (in both the appeals).
739 The Judgment of the Court was delivered by Ayyangar J.
These two appeals, by special leave, are con cerned with the validity of the respondent firm 's claim as the registered proprietor of a Trade Mark `Navaratna Pharmaceutical Laboratories ' used by it on its medicinal preparations.
The two appeals arise out of different proceedings but before narrating their history it would be convenient to briefly set out the facts upon which the claim of the respondent to the exclusive use of this Trade Mark is based.
The respondent, as stated already, is a firm and it carries on business at Ernakulam in the same name and style as the Trade Mark now in controversy "Navaratna Pharmaceutical Laboratories".
As its name indicates, the firm manufactures medicinal products.
The business of the firm was founded sometime in 1926 by one Dr. Sarvothama Rao who is now no more.
When started, the business was called 'Navaratna Pharmacy ' but from January, 1945 the name of the business was changed to the present one Navaratna Pharmaceutical Laboratories.
From the very beginning the proprietors used the Trade, Mark "Navaratna" on the products which they manufactured and sold.
In December, 1928 the word 'Navaratna ' and the name 'Navaratna Pharmacy ' as connoting the products of the respondent firm were registered by a declaration of ownership before the Registrar of Assurances, Calcutta.
When a legislation substantially similar to the Indian was enacted in the State of Cochin [Vide the Cochin 19 of 1199 (1944)] the respondent firm registered the word 'Navarama ' as a Trade Mark in respect of its medicinal preparations, on January 31, 1947 and another mark consisting of the words 'Navaratna Pharmaceutical Laboratories ' to denote the same products on February 17, 1948.
There is evidence that the respondent firm has been having an expanding business in the products which it manufactures and has been selling the same under the above and other cognate names, and this has continued ever since.
The Trade Marks (Amendment) Act, 1946 (Act 12 of 1946) inserted section 82 A in the of 1940 and under this provision the Central Government was empowered to enter into reciprocal arrangements with Indian States for mutual recognition of TradeMarks registered in the other territory.
There was a similar provision in section 78 A of the Cochin Act and availing itself of this provision the respondent firm applied for the registration of the words 'Navaratna Pharmaceutical Laboratories ' in the Trade spp./65 4 740 Marks Registry at Bombay.
The application was advertised and no opposition having been entered, the Trade Mark was registered.
Pausing here, certain facts have to be set out in relation to the :appellant, since they are material for understanding the Origin Of the proceedings which have given rise to these appeals.
The appellant has, for some Years Past, been carrying on business in the preparation of Ayurvedic Pharmaceutical Products at Jullundur City in East punjab under the name of the 'Navaratna Kalpa Pharmacy " and had been vending the medicines Prepared by him under the name 'Navaratna Kalpa" while so, in October, 1946, The applied for the registration of the Words "NaVaratna Kalpa" as a Trade Mark for his medicinal preparations.
This application was advertised in April, 1950, and the, respondent firm opposed the application for registration on the ground that the word Navaratna" was descriptive and, having no distinctiveness, could not be registered.
This objection prevailed and the registration was refused.
This led to the proceedings which have culminated in these appeals.
In the first instance, the appellant moved the Registrar Of Trade Marks for removing from the register the trade mark "Navaratna" and the word "Navarama" in the Other mark of the respondent.
By this date, however, the respondent had filed wit No. 233 of 1951 (from which C.A. No. 522 of 1962 arises) before the District Judge, Anjikaimal, for a permanent injunction restraining the appellant from advertising, selling or offering for sale any preparations under a trade mark combining the word 'Navaratne or any similar word etc.
By reason of the pendency of this proceeding in which the validity of the registration of the respondent 's mark was directly involved the Registrar refused his application, and directed the appellant to move the High Court within whose jurisdiction the District Court was situated for the rectification of the register by deleting the respondent 's mark.
The appellant accordingly Mod O.P. No. 19 of 1952 in the High Court of Travancore Cochin praying that the registration of the word " 'Navaratna:" by itself or as part of other marks as a trade mark for goods belonging to the respondent be removed from the register.
Civil Appeal 523 of 1962 arises out of the order of the High Court on this petition.
This original petition No. 19 of 1952 was kept pending in the High Court after it was ready for hearing and was heard along with the appeal against the decree of the District Judge in Original Suit No. 233 of 1951.
741 The original suit was, as stated earlier, for a perpetual injunction against the appellant for using the word "Navaratna" and the cause of action for that suit was stated to be that the plaintiff (respondent before us) being proprietor of the two registered trade marks "Navaratna" and "Navaratna Pharmaceutical Laboratories" had an exclusive right to the use of those marks for his medicinal preparations and that the said right was infringed by the defendant (appellant before us) advertising his goods under the name "Navaratna Kalpa" with the trade origin of the goods being described as "Navaratna Kalpa Pharmacy".
There was also an allegation that by use of these marks the defendant was passing off his goods as those of the plaintiff.
By his written statement the defendant raised principally three points: 1.(a)That the word "Navaratna" in its etymo logical sense meant Ayurvedic preparations of a particular composition and that the word had been generally adopted by several firms and organisations for designating their preparations which they vended with that description.
It was therefore submitted that the plaintiff could claim no exclusive title to the use of that word which was a common word for the description of the product as a trade mark to designate its pharmaceutical preparations.
1.(b) As regards the trade mark "Navaratna Pharmaceutical Laboratories" which was in fact the name in which the plain tiff carried on its business, the defence was that the crucial integer in that mark was the expression "Navaratna" and that if the plaintiff was not entitled to the exclusive use of the word "Navaratna" to designate its products, the combination of the word with the two other words "Pharmaceutical" and Laboratories" which were ordinary English words descriptive of the place where medicines were prepared could not render the trade mark a registerable one.
For them two reasons the defence was that no claim could be made to relief under section 21 of the(2)Next it was submitted that even on the basis that the plaintiff was entitled to the use of the word "Navaratna ' either alone or in the combination "Navaratna Pharmaceutical Laboratories", still the use, of the trade mark by the defendant of the words "Navaratna Kalpa" and "Navaratna Kalpa Pharmacy" were not 742 either identical with nor deceptively similar to the plaintiffs marks and therefore he was not guilty of any infringement.
(3)As regards the claim for relief on the basis of passing off, the defendant laid stress upon the packing, get up and the manner in which the trade origin of the goods was clearly brought out in the packages in which his preparations were marketed and it was submitted that they clearly negatived any possibility of passing off.
Appropriate issues were raised based on the pleadings and the contentions just now indicated and the learned District Judge found: (1) that having regard to the method of packing adopted and theother features of the get up etc., on which the defence had relied,the defendant was not guilty of passing off; (2) that the word "Navaratna" was a common word in Ayurvedic phraseology and consequently the plaintiff could not claim any exclusive title to the use of that word by reason of his having used it for his products even though this had been for a number of years.
To reach this finding the learned District Judge pointed out that it was brought to his notice that there were several concerns manufacturing and vending Ayurvedic preparations which had for a very long time past either used marks which included that word and had described their products by calling them "Navaratna" either alone or in combination with other words.
The right of the plaintiff to relief on the ground of the infringement of the mark 'Navaratna ' was therefore disallowed.
Dealing next with the question as to whether the mark "Navaratna Pharmaceutical Laboratories" could be validly registered and rights claimed for such a registration, the learned Judge answered it in the affirmative pointing out that no evidence was placed before the Court of the use by any other person, firm or concern of that name and that there was evidence which was uncontradicted that trade name "Navaratna Pharmaceutical Laboratories" or some variant of the same had been used as a trade mark by the plaintiff for a very long time and had come in the market to denote exclusively the goods of the plaintiff.
The learned District Judge further held the mark "Navaratna Pharmaceutical Laboratories" or its permissible variants had been used long before February 25, 1937 and having acquired factual distinctiveness, was registerable under the proviso to section 6(3) of the Act.
The plaintiff was, therefore, granted a decree for an injunction confined to the trade mark "Navaratna Pharmaceutical Laboratories".
743 From this judgment the appellant filed an appeal to the High Court and the learned Judges heard the appeal along with the Original Petition under section 46 of the Act filed by the appellant.
By a common judgment the learned Judges confirmed all the findings and the decree of the learned District Judge and made an order in the, Original Petition conformably to this decision.
These two appeals have been preferred by the appellant after obtaining special leave from this Court in these two matters respectively.
The first submission of Mr. Agarwala, learned Counsel for the appellant was that the judgment of the High Court holding the respondent 's claim to the trade mark "Navaratna Pharmaceutical Laboratories" as a validly registered mark was really inconsistent with their finding that "Navaratna" which was the crucial and important word in that trade mark was a descriptive word in regard to which the respondent could obtain no exclusive right by any amount of user.
His further submission was that if he was right in this, the addition of the words "Pharmaceutical" and "Laboratories" which were common English words of ordinary use to designate the place where pharmaceutical products are manufactured, were, on the terms of section 6 of the and even otherwise, incapable of acquiring distinctness by mere user.
He, therefore submitted that the plaintiff had no exclusive right to the use of the mark as a registered trade mark and that consequently his claim for the relief of perpetual injunction Under section 21 of the was not sustainable.
For this purpose learned Counsel relied on the provisions of section 6 of the which provided the positive qualifications for registrability of trade mark on the relevant date That section runs: "6.(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars namely: (a) the name of a company, individual or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) one or more invented words; (d) one or more words having no direct reference to the character or quality of the goods, and not being, according to its ordinary significa 744 tion, a geographical name or surname or the name of a sect, caste or tribe in India; (e) any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the description in the above clauses, shall not be registerable except upon evidence of its distinctiveness.
(2)For the purposes of this section, the expression distinctive ' means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3)in determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which (a) the trade mark is inherently so adapted to distinguish, and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish : Provided that in the case of a trade mark which has been continuously used (either by the applicant for the registration or by some predecessor in his business, and either in its original form or with additions or alterations not substantially affecting its identity) in relation to which registration is applied for, during a period from a date prior to the 25th day of February, 1937, to the date of application for registration, the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration.
" The learned Counsel particularly stressed clause (d) of sub section (1) which excluded words "having direct reference to the character or quality of the goods" from being treated as distinctive, and thus qualifying for registrability. 'Me word 'Navaratna ' having been held to be not distinctive and indeed incapable of becoming 745 distinctive by reason of its being merely the Sanskrit word for describing Ayurvedic preparations of a particular composition, he submitted that the words "Pharmaceutical ' and 'Laboratories ' could neither by themselves nor in combination with it confer upon that word the quality of distinctiveness having regard to their ordinary descriptive signification.
If the matter had to be decided in terms of section 6(1) alone without reference to the terms of the proviso to sub section(3) to which we shall advert presently we see great force in the submission of the learned Counsel.
As Pry L. J. said in : Dunn(1) with reference to the cor responding law in U.K. which has been reproduced by section 6 of the Indian Act: "It is said that the words 'Fruit Salt ' have never been used in collocation except by Mr. Eno.
Be it so . .
I cannot help regarding the attempt on Mr. Eno 's part as an instance of that perpetual struggle which it seems to me is going on to enclose and to appropriate as private property certain little strips of the great open common of the English language. 'Mat is a kind of trespass against which I think the courts ought to set their faces.
" There can be no dispute either that the words 'pharmaceutical Laboratories" used in relation to medicinal preparations have "a direct reference to the character of the goods".
Speaking of the mark "Torq set" in respect of screws bolts, rivets and studs and fastening devices, Lloyd Jacob observed :(2) "Direct reference corresponds in effect to aptness for normal description".
Judged by this test it could not be seriously contended that the prohibition in section 6 (1) (d) would be attracted to this mark.
In the present case, the words 'Pharmaceutical ' and 'Laboratories ' would have a direct reference to the character of the goods since the trade marks to which it is claimed to attach them are medicinal or pharmaceutical products.
In this connection reference may also be made to a decision of the House of Lords to which Mr. Agarwala drew our attention.
Yorkshire Copper Works Limited 's Application for a Trade Mark.(8) Yorkshire Copper Works Ltd. vs Registrar of Trade Marks(4) was an appeal from (1) at 386.(2) In the matter of American Screw Co. 's appln.at 346. (3) (4) (1952) 69 R.P.C. 207; 746 the Court of appeal affirming the decision of the Divisional Court which rejected an appeal against an order of the Registrar refusing to register the Trade Mark "Yorkshire" for "solid drawn tubes and capillary fittings all made of copper or non ferrous copper alloys".
The refusal to register was on the ground of the word being geographical and so being disqualified for registration under a provision of the U.K. of 1938 identical in terms with section 6 (1 ) (d) of the Act.
The applicants led evidence to establish and claimed that they had established that everyone concerned in the trade in copper tubes understood "Yorkshire Tubes" as meaning the products of the applicant.
It was therefore contended that the word 'Yorkshire ' had lost its primary geographical significance and had become 100% distinctive of the applicant 's goods.
In dismissing the appeal Lord Simonds, Lord Chancellor observed "I am content to accept the statement reiterated by their learned Counsel that the mark had acquired 100 per cent distinctiveness.
In spite of this fact the Registrar refused registration and has been upheld in his refusal by Lloyd Jacob, J. and the unanimous opinion of the Court of Appeal. .
Here I must express my emphatic dissent from the proposition which was strenuously urged by Counsel for the Appel lants that distinctiveness in fact is conclusive at any rate, if there is what he called 100 per cent distinctiveness.
In my opinion the decisions of this House in the W. & G. case and the Glastonbury case are fatal to this proposition and I am content to accept as accurate the clear exposition of those cases given by the learned Master of the Rolls in the present case.
He took the view which I share that the Court of Appeal had in the Liverpool Cable case rightly interpreted the opinion of Lord Parker in the W. & G. case and that this House, in its turn, in the Glastonbury case endorsed that interpretation.
Accepting that view of the law, which indeed, if the matter were res integral I should not hesitate to commend to your Lordships, I do not see how the Registrar could have come to any other conclusion.
Unless, having found distinctiveness in fact, he needed to pay no regard to the other factor of inherent adaptability, he was faced by the fact that there could not well be a geographical name less "inherently adapted" than Yorkshire to distinguish the 747 goods of the Appellants.
I do not propose to try to define this expression.
But I would say that, paradoxically perhaps, the more apt a word is to describe the goods of a manufacturer, the less apt it is to dis tinguish them: for a word that is apt to describe the goods of A, is likely to be apt to describe the similar goods of B.
It is, I think, for this very reason that a geographical name in prima facie denied registrability.
For, just as a manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim for his own a territory, whether country, county or town, which may be in the future, if it is not now, the seat of manufacture of goods similar to his to own.
Of course, where the geographical area is very small there is a possibility of the inherent incapability,to attain distinctiveness becoming attenuated, but we do not go into these details as they are unnecessary for our present purpose.
The learned Counsel is therefore right in his submission that if the right of the respondent to the registration of his mark had to be considered solely on the terms of section 6(1), the appellants submissions as regards the non registrability of the respondent 's mark would have great force.
That, however, is not the position here.
The learned District Judge has, on the basis of evidence recorded a finding that the mark or trade name 'Navaratna Pharmaceutical Laboratories ' had by user acquired distinctiveness in the sense of indicating the respondent and the respondent alone as the manufacturer of goods bearing that mark and that finding has been affirmed by the learned Judges of the High Court.
The learned District Judge has further held that the respondent has been using that mark or a permissible variant of that mark from long before the 25th February 1937, and that in consequence, notwithstanding that the mark might not satisfy the requirements of section 6(1) as explained by sub sections(2) & (3) of that section, still it was registrable as a Trade Mark by virtue of the proviso to section 6(3) of the Act.
We do not find any error in the approach of the learned District Judge to this question.
In the first place, there was the intention on the part of the proprietor of the mark to indicate by its use the origin of the goods on which it was used.
There was also indubitable evidence regarding the recognition of that mark as indicating origin on the part of that section of the public who buy these goods in the course of trade or for 748 consumption.
Thus the finding was that by reputation the mark had come to denote the goods of the.
Besides the words were not a merely laudatory expression in relation to the goods, but descriptive though as such they would prima facie not be distinctive.
Length of user would, of course, be a material factor for the mark to become distinctive and the learned District Judge found that by such a long user the mark had become exclusively associated with the goods of the respondent in the market.
Though the learned Judges of the High Court have not dis cussed this question in their judgment, they have affirmed in general terms the conclusions recorded by the District Judge on this point.
There being concurrent findings on the question as to whether the respondent 's mark has acquired distinctiveness as a matter of fact, and there being no error of law in the criteria applied for reaching them, it would not be open to the appellant to challenge the correctness of that finding and, indeed, learned Counsel for the appellant did not attempt to do so.
What he, however, submitted was that on a proper construction of the proviso to section 6(3) of the Act marks which from their very nature were inherently incapable of acquiring distinctiveness could not qualify for registration and the Courts below therefore erred in holding the marks which because of their being descriptive of the goods were inherently incapable of registration, to be registrable.
This takes us to the consideration of the proper construction of the proviso.
Closely examined, the arguments of the learned Counsel on this matter boils down to this that the proviso really did not introduce any standard of distinctiveness different from that which had been provided by the terms of section 6(1) as explained by sub section(2) and the main part of sub section(3); in other words, the submission was that in cases where the mark fell within the prohibition of cl.(d) of sub section(1) it could not qualify for registration on the basis of acquired distinctiveness by long user as an "old mark" i.e., from before February 25, 1937.
In support of this submission the learned Counsel relied on the view expressed by Mr. section Venkateswaran in his comments on section 6(3) at pages 152 154 of his Treatise on Trade Mark Act 1940 which view he submitted had found judicial acceptance in a decision ,of the Calcutta High Court reported as In the matter of India Electric Works Ltd.(1) (1) 749 Before proceeding further we should, add what there is a decision of the Allahabad High Court in Ram Rekhpal vs Amrit Dhara Pharmacy(1) in which the question of the construction of the proviso came up for consideration.
The learned Judges, however, without any discussion of the points involved, expressed their opinion that even if the mark came within the prohibition in cl.(d) of sub section(1) of section 6, an old mark i.e., marks in use from before February 25, 1937 would qualify for registration if there was evidence of factual a distinctiveness.
This decision has been referred to and relied on by the learned District Judge in the case before us; but as it does not contain any reasons for the decision, it may be omitted from consideration.
The main part of the learned Counsel 's submission as regards, the construction of the proviso was based on the comment in Mr. section Venkateswaraies treatise which learned Counsel adopted ' as part of his argument.
no primary requisite for attracting the proviso is that the trade mark must have been continuously used in relation to the same goods as those in relation to which registration is applied for from a period prior to February 25, 1937.
It is true that in the present case the relevant mark as used before February 25, 1937 was "Navaratna Pharmacy" and ' the mark now on the register the validity of whose registration under the is in question is "Navaratna Pharmaceutical Laboratories".
But it would be noticed that by the words within the brackets in the proviso marks "either in their original form or with additions or alterations not substantially affecting its identity" qualify for the special privileges accorded ' to old marks.
It was not contended before the Courts below or before us that the mark now in question did not satisfy this test when compared with that which the respondent was using prior to February 25, 1937.
This being conceded, the only question for consideration is whether the last part of the proviso that the Registrar may accept evidence of acquired distinctive ness as entitling a mark for registration notwithstanding the fact that "the trade mark is not adapted to distinguish as aforesaid", could apply to cases where the trade mark has a direct reference to the character or quality of the goods or is otherwise not qualified for registration under cl.(d) of sub section.
The entire argument on this part of the case is merely based on the use of the expressions 'adapted to distinguish as aforesaid ' and 'distinctiveness ' in the concluding portion of the proviso.
It was not disputed that on the words of the proviso when the Registrar recorded a finding that the mark submitted for registration was "not adapted to distinguish as aforesaid", that is, that the mark did not fulfill the requirements of the tests suggested by the main part of sub section(3), he was authorised to permit evidence being led as to "acquired distinctiveness" and to register the mark, if the evidence satisfied him on this point.
It was, however, urged that the word 'distinctiveness ' in the expression "acquired dis tinctiveness" had to be understood in the sense in which it is defined in sub section(2) where it is stated to mean practically " adapted to distinguish", the content and the significance of which is elaborated in sub section.
The submission was that at that stage, when accepting evidence of acquired distinctiveness one is again thrown back on sub sections (2) and (3), with the result that unless the tests of distinctiveness and of "adaptation to distinguish" which are explained in sub sections(2) and (3) are satisfied, no amount of evidence led before the Registrar of factual acquired distinctiveness would suffice to permit registration.
In other words, the argument was that if a mark was one which was prohibited from being registered under section 6 (1 ) (d), that ban which is not lifted by proof of acquired distinctiveness in the case of new marks not falling within the proviso is not lifted either in the case of old marks which had been in use continuously as a trade mark from before February 25, 1937.
It would be seen that if this argument were accepted, the proviso adds nothing to the section and makes no variation in the law as regards old marks which had been in use continuously from before the specified date.
It would also make meaningless the words 'shall not refuse registration ' by reason only of the fact that the trade mark is not 'adapted to distinguish ' occurring in the proviso.
It was said that this construction which would render the proviso otiose and a futility was necessitated by the opening words of sub section(2) where the definition of the expression "distinctive" was said to be "for the purposes of this section and that the proviso to the sub section being part of the section, the words there had to be understood in the sense defined.
We feel unable toaccept this construction, nor do we read the opening words ofsub section(2) as necessarily leading to this result.
Briefly stated,"distinctive" is defined in sub section(2) as "adapted to distinguish" and the latter phrase explained in language which might exclude what is negatived by section 6 (1 ) (d).
But that, however, does not solve the problem created by the words of the proviso "Shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid".
The use of the words "as aforesaid" takes one back first to sub section 751 (3) and then on to sub sectionand necessarily also to the provision in section 6(1) (d) where marks which are incapable of acquiring distinctiveness are dealt with.
Hence even on the terms of the proviso, however construed, it is not possible to escape the conclusion that a mark which is not "adapted to distinguish" by the application of the tests laid down in section 6(1) could still qualify for registration by proof of acquired distinctiveness.
For the present purpose it is unnecessary to enter into an examination of the general nature of a proviso and of its function in statutes.
It is sufficient to point out that it would not be a reasonable construction of any statute to say that a proviso which in terms purports to create an exception and seeks to confer certain special rights on a particular class of cases included in it should be held to be otiose and to have achieved nothing merely because of the word 'distinctiveness ' used in it which has been defined elsewhere.
A construction which would lead to old marks and new marks being placed on the same footing and being subjected to the same tests for registrability cannot, in our opinion, be accepted.
In this connection, some support was sought for the cons truction pressed upon us by the learned Counsel for the appellants by reference to section 20 of the Act which reads : "(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark unless such trade mark has been continuously in use since before the 25th day of February, 1937, by such person or by a predecessor in title of his and unless an application for its registration, made within five years from the commencement of this Act, has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused.
(2)Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
" It was urged that if every mark which had been in use prior, to February 25, 1937 qualified for registration under the proviso to section 6(3), there could really be no cases where the Registrar could refuse registration, with the result that the contingency contemplated by section 20 of the Act could never arise.
This was 752 stated to support the construction of the proviso which learned Counsel commended for our acceptance.
Here again, we do not see any substance in this argument.
A mark might have been used even prior to February 25, 1937; but it might not quality for registration under the proviso to section 6(3) by not having acquired that degree of factual distinctiveness which the Registrar considers is sufficient to enable it to qualify for registration.
It is therefore possible to conceive of cases where even if the proviso to section 6(3) were construed in the manner in which we 'have indicated, there would still be scope for the rejection by the Registrar of a trade mark in use prior to the specified date.
That in our opinion, is the true ratio of the decision of McNair, J. in India Electric Works Ltd.(1) on which Mr. Agarwala relied in this connection.
The Court was there concerned with an appeal from an order of the Registrar refusing registration in respect of an old mark.
The mark in question was the word 'India ' as applied to electric 'fans.
The learned Judge dismissed the appeal on the ground that the word 'India ' was a geographical word and therefore would not qualify for registration being prohibited by section 6 (1) (d).
The learned Judge also considered whether the mark could 'qualify for registration under the proviso.
The conclusion reached on this part of the case was that the applicant had not established factual acquired distinctiveness to qualify for registration, and that the Registrar was therefore right in the finding that he recorded on this matter.
Proof of user, the learned Judge hold, was not ipso jure proof of acquired distinctiveness 'and this is obviously right and does not advance the appellant 's submission in regard to this question.
Though there are some observations which might be wider, it substantially proceeded on ,accepting the finding of the Registrar regarding the applicant 'having failed to establish factual acquired distinctiveness for his mark.
That case therefore does not assist the learned Counsel for the construction that he seeks to put on the proviso to section 6(3).
As we have pointed out earlier, there are concurrent findings of fact on this point that through long user from 1926 onwards, the mark had become associated exclusively in the market with the pharmaceutical products manufactured by the respondent.
The finding is not capable of being challenged before us and was not, in fact, attempted to be challenged.
From this it would follow that the respondents mark was rightly registered and that ,(1) 753 he was entitled to protect an invasion of his right by seeking a perpetual injunction from persons who invaded those rights.
The next part of the learned Counsel 's argument related to the question whether the Trade Mark used by the appellant viz., `Navaratna Pharmacy ' "so nearly resembled the trade mark of the respondent as to be likely to deceive or cause confusion in the course of trade" within section 21 of the Act.
The mark is not identical and so the question is whether the appellant 's mark is deceptively similar to the respondent 'section On this matter also, there are concurrent findings of the Courts below regarding the deceptive similarity of the two marks.
That the words 'Navaratna Pharmacy ' and 'Navaratna Pharmaceutical Laboratories ' are similar in the sense spoken of by section 21 does not appear to us to be of much doubt.
But the learned Counsel 's submissions were two fold: (1) that the Courts below had found that the word 'Navaratna ' was a word in common use in the trade in Ayurvedic preparations and the courts rightly held the respondent could not claim exclusive rights to the use of that word in the mark.
In these circumstances, Mr. Agarwala submitted that the Courts below should have insisted on either the respondent disclaiming exclusive rights to the word 'Navaratna ' in the trade mark 'Navaratna Pharmaceutical Laboratories ' or that the disclaimer should have been ordered as a condition of the trade mark remaining on the register under section 13 of the Act.
, (2) The finding by the Courts below that the marks were deceptively similar was directly contrary to and inconsistent with their finding that the packing, label, get up etc., in which the appellant 's goods were marketed was not likely to cause any confusion in the market or deceive any purchasers, wary or otherwise on the basis of which the claim for passing off was rejected.
As regards the first contention regarding disclaimer and the reference to section 13, the matter stands thus.
Under the terms of section 13 of the Act, an order directing disclaimer could have been passed only by the High Court when dealing with the appellant 's application under section 46 (2) of the Act.
The application that he filed contained no prayer to direct a disclaimer, and no submission appears to have been made to the High Court when dealing with the petition or even with the appeal that the respondent should be directed to disclaim.
In these circumstances, we do not consider it proper to permit the appellant to urge this argument before us.
754 The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark.
We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under section 21 in respect of a registered trade mark and also of a passing off by the use of the same mark.
The finding in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get up together with the circumstance that the name and address of the manufacture of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent 's claim that the appellant had passed off his goods as those of the respondent.
These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof.
While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement.
The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (Vide section 21 of the Act).
The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement.
No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered.
trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark.
But there the correspondence between the two ceases.
In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant 's mark is likely to deceive, but where the similarity 755 between the plaintiff 's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the .conclusion that there is an imitation, no further evidence is required to establish that the plaintiff 's rights are violated.
Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be "in the course of trade,, the question whether there has been an infringement is to be decided by comparison of the two marks.
Where the two marks are identical no further questions arise; for then the infringement is made out.
When the two marks are not identical, the, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide section 21).
A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive".
But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar.
This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards.
The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration.
The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark.
The purpose of the comparison is for determining whether the essential features of the plaintiff 's trade mark are to be found in that used by the defendant.
The identification of the essential features of the mark is in essence p./65 5 756 a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade.
It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.
The mark of the respondent which he claims has been in fringed by the appellant is the mark 'Navaratna Pharmaceutical Laboratories ', and the mark of the appellant which the respondent claimed was a colourable imitation of that mark is 'Navaratna Pharmacy.
Mr. Agarwala here again stressed the fact that the 'Navaratna ' which constituted an essential part or feature of the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant 's mark were disregarded, there would not be enough material left for holding that the appellant had used a trade mark which was deceptively similar to that of the respondent.
But this proceeds, in our opinion, on ignoring that the appellant is not, as we have explained earlier, entitled to insist on a disclaimer, in regard to that word by the respondent.
In these circumstances, the trade mark to be compared with that used by the appellant is the entire registered mark including the word 'Navaratna '.
Even otherwise, as stated in a slightly different context:(1) "Where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts which are common".
It appears to us that the conclusion reached by the Courts below that the appellants mark is deceptively similar to that of the respondents cannot be stated to be erroneous.
Besides, this question of deceptive similarity is a question of fact, unless the test employed for determining it suffers from error.
In the present case, it was not suggested that the Courts below had committed any error in laying down the principles on which the comparison has to be made and deceptive similarity ascertained.
(See per Lord Watson in Attorney General for the Dominion of Canada vs Attorney General for Ontario etc.) (2) .
As there are concurrent findings of fact on this matter, we do not propose to enter into a discussion of this question de novo, since we are satisfied that the conclusion reached is not unreasonable.
Lastly it was submitted that this was a case of honest con current user within section 10(2) of the Act.
This point was, however, not raised in any of the Courts below and we do not propose to entertain it for the first time in this Court.
The result is, the appeals are dismissed with costs one set of hearing fee.
Appeals dismissed.

summary/full:
The respondent, a firm manufacturing medicinal products, was the proprietor of two registered trade marks "Navaratna" and "Navaratna pharmaceutical Laboratories " from a, period prior to 25th February 1937.
When the appellant, who was also a manufacturer of medicinal preparations, sought the registration of the words "Navaratna Pharmacy" as his trade mark the respondent objected successfully.
The appellant then moved the Registrar of Trade Marks for removing from the register, the trade mark "Navaratna" and for deleting the word "Navaratna" from the other trade mark of the respondent.
The Registrar directed him to move the High Court for the rectification, as the respondent had by that time filed a suit in the District Court for a permanent injunction restraining the appellant from selling any preparation under a mark containing the word "Navaratna". 'Me appellant accordingly filed an original petition in the High Court.
The suit in the District Court was decreed in favour of the respondent with respect to the trade mark "Navaratna Pharmaceutical Laboratories.
" An appeal against the decree filed by the appellant, and his Original Petition were heard together by the High Court and the decree of the District Court in favour of the respondent was confirmed.
It was held that : (i) having regard to the method of packing adopted by the appellant, he was not guilty of passing off, (ii) the respondent was not entitled to any relief on the ground of the infringement of the mark "Navaratna" as it was a common word in Ayurvedik phraseology and used in connection with several medicinal preparations and (iii) the trade name "Navaratna Pharmaceutical Laboratories" had been use as a trade mark, by the respon dent, for a very long time and had come to denote exclusively his goods; and that the trade mark having been in use from before the specified date February 25, 1937 and having acquired factual distinctiveness, was registerable under the proviso to section 6(3) of the .
In appeal to the Supreme Court it was contended that : (i) the decision of the High Court that the trade mark "Navaratna Pharmaceutical Labradortories ' was validly registerable was inconsistent with the finding that "Navaratna" which was the crucial word in the trade mark was only a descriptive word in regard to which the respondent could obtain no exclusive right, and (ii) the finding that the marks of the appellant and respondent were deceptively similar was inconsistent with the finding that the packing in which the appellant 's goods were marketed was not likely to cause confusion or deceive purchasers.
HELD : (i) A mark which is not "adapted to distinguish" by the application of the tests laid down in section 6(1) of the Act, could still qualify for registration by virtue of the proviso to section 6(3), by proof of acquired distinctiveness.
Under the proviso, with respect to marks in use from a date prior to 25th February 1937, "the Registrar shall not refuse registra 738 tion by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration".
The word "distinctiveness" cannot mean "adapted to distinguish" for then, the proviso would add nothing to the section and would make no variation in the law as between new marks and old marks which had been in use continuously from before the specified date.
A construction which would lead to old marks and new marks being placed on the same footing and being subjected to the same tests for registration cannot be accepted.
However, a mark might have been used prior to the specified date, but it might not qualify for registration under the proviso by not having acquired that degree of factual distinctiveness which the Registrar considers sufficient to enable it to qualify for registration.
Therefore, when the Registrar records a finding that the mark submitted for registration was "not adapted to distinguish as aforesaid", he was authorised to permit evidence being led as to "acquired distinctiveness".
Since both the trial court and the High Court found that through long user from 1926 onwards, the mark of the respondent had become associated exclusively in the market with the pharmaceutical products manufactured by him, it would follow that his mark was rightly registered and that he was entitled to protect an invasion of his rights, by seeking a perpetual injunction against those who invaded them.
[744 G; 750 A C, E F; 751 B, D; 752 A B G H; 753 A] (ii)In an action for infringement of a trade mark the onus would be on the plaintiff to establish that the trade mark used by the defendant is deceptively similar.
This has necessarily to be done by a comparison of the two marks the degree of resemblance necessary being incapable of defi nition by objective standards.
Where the similarity between the plaintiff 's and defendant 's marks is so close either visually, phonetically or otherwise, and the Court reaches the conclusion that there is an invitation, no further evidence is required to establish that the plaintiff 's rights are violated.
The fact that the get us, packing etc., showed marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial.
A finding regarding the packing is relevant with respect to the relief on the ground of passing off, but plays a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and a statutory remedy, under section 21, for vindication of his exclusive right to use it.
The question of deceptive similarity is one of fact, unless the test employed suffers from error this court would not interfere.
In the instant case there being no such error, the conclusion reached by both the lower courts that the appellant 's mark was deceptively similar to that of the respondent, cannot be interfered with.
[754 D F; 755 A C, F G; 756 F H]