This is an appeal by Messrs Lodhi & Company under section 76 of the Trade M irks Act, 1940 against the order of an Assistant Registrar of Trade Marks, dated the 28th of March 1967, the concluding part of which is as follows :- "Finally, after giving my fullest consideration to the facts of this case and also taking into account of my judgment dated 1-4-1964 in Opposition No. 35 of 1963 and the decision given by Farookee, J. Upholding my earlier decision, I come to the conclusion without any hesitation that the applicants (Messrs Ansonia Watch Co.) are entitled to the registration of the word mark ANSONIA in the form they have been using in their Application No. 38621 on the ground of honest concurrent user under section 10
(2) of the Trade Marks Act, 1.940, and I order the application to proceed to registration after expiry of the time of appeal."
2. Counsel for the parties have given the background of facts to be that the word "Ai`?SONIH," is claimed by both parties to be their trade marks which both claim to have been using in respect of clocks and watches for a long time. The appellants, namely Messrs Lodhi & Co. Applied for the registration of that word in 1960. The application was advertised and opposi--tion was entered by respondent No. 1, namely Ansonia Watch Co. In 1963, during the pendency of that application, Messrs Ansonia & Co. Also applied for the registration of the word "ANSONIA" as their trade mark.
Their application was yet unripe when the application of Messrs Lodhi & Co. Came up for final hearing. That application was accepted by the Assistant Registrar of Trade Marks vide his order dated the l.t of April 1964, the relevant part of which is as follows "After considering every aspect of the case as stated above and in exercise of my discretion I am of firm opinion that the applicants (Messrs Lodhi & Co.) are entitled to registration of mark ANSONIA in their name under section 10(2) of the Trade Marks Act, 1940 with the condition that use of the mark is confined to the exact form in which the mark appears written in joint handwriting on the form of their application and I order accordingly that the mark ANSONIA of the applicants in their Application No. 33491 to proceed to registration under s:ction 10(2) of the Trade Marks Act, 1940. The prayer of the opponents that their mark may be allowed to proceed to registration is though acceptable also under section 10(2) yet cannot be decided in the present proceedings as it is a separate issue and will be taken up for consideration with reference to this judgment at the proper time."
Messrs Lodhl & Co. In whose favour the above-mentioned restricted order of 1-4-1964 was made, did not question it by preferring an appeal against it, but the present respondent f--- o. 1, namely Ansonia Watch Co. Who were the opponents in that case, preferred an appeal to this Court under section 76 of the Trade Marks Act, 1940, which was heard by a learned Single Judge of this Court and dismissed vide his order dated the 25th of April 1966. Messrs Ansonia Watch Co. Have preferred a Letters Patent Appeal against that order. It bears No. 233 of 1966, and is to be heard by a Division Bench of this Court in due course.
3. After the dismissal of Messrs Ansonia Watch Company's appeal by a learned Single Judge, their own application came up for final disposal before the Assistant Registrar, Trade Marks who accepted it also with a restrictive provision, vide his order dated the 28th of March 1967. This appeal by Messrs Lodhi & Co. Is directed against that order, and is to be heard by a Single Judge. It is now before me.
4. The above facts indicate a rather anomalous situation for more reasons than one. Firstly, the subject-matter of this appeal and of the Letters Patent Appeal are practically the same, namely, whether the word ANSONIA should be registered by one or both users of it or should be registered as the exclusive trade mark of anyone of them. In the case, which is the subject--matter of the Letters Patent Appeal, the claim of Ansonia Watch Co. Is that Messrs Lodhl & Co. Should not be registered as concurrent users of the word ANSONIA whereas in this appeal Messrs Lodhi & Co.
Object to the registration of Messrs Ansonia Watch Co. As concurrent users of that word. Secondly, it is worthy of note that the first order dated the 1st of April 1964 by which the application of Messrs Lodhi & Co. Was accepted subject to the concurrent use of Messrs Ansonia Watch Co. Has become final against Messrs Lodhl & Co. Because they did not appeal against it. The second order by which the application of Messrs Ansonia Watch Co. Was accepted subject to the concurrent use of Messrs Lodhi & Co. Has become final against Messrs Ansonia Watch Co. Because they have not appealed against it. This means that the decision to allow con. Current use of the trade mark has become final against Messrs Lodhi & Co. In one case and against Messrs Ansonia Watch Co. 9n another case. Thirdly, the Letters Patent Appeal of Messrs Ansonia Watch Co. Bearing No. 233 of 1966 in which they have questioned the order by which the application of Messrs Lodhi & Co. Was accepted subject to concurrent use Is in question. That appeal is to be heard by a Division Bench whereas this appeal of Messrs Lodhf & Co. In which they are objecting to the decision by which the application of Messrs Ansonia Watch Co. Has been accepted subject to concurrent use is in question, and Is to be heard by a Single Bench. In other words, the cases are to be heard separately, although the essential question is common, namely that both the parties have accepted the decision for concurrent use when it restricts their own use of the trade mark, but at the same time are insisting that the other party should not be allowed to use the trade mark at all. .
5. The above situation has arisen owing to the error of the Assistant Registrar of Trade Marks In omitting to read sub--sections (1) and (2) of section 10 of the Trade Marks Act, 1940 together. They are as follows "10(1). Save as provided In subsection (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or which so nearly resembles such trade mark as to be likely to deceive or cause confusion.
(2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make It proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose."
6. The Registrar decided the application of MessrsLodhi & Co. At a time when the application of Messrs Ansonia Watch Co. Was not yet ripe apparently with the intention of recognising the concurrent user of the trade mark by both the parties. This is clear from the following observations made in the order by which he decided the application of Messrs Lodhi & Co. 1 "I am of firm opinion that the applicants are entitled to registration of ANSONIA in their name under section 10(2) of tthe Trade Marks Act, 1940 . . . . The prayer of the opponents (Messrs Ansonia Watch Co.) that their mark may be allowed to proceed to registration is though acceptable also under section 10(2), yet cannot be decided in the present proceedings as it is a separate issue and will be taken up for consideration with reference to this judgment at the proper time."
The above observations leave no doubt that the Assistant Registrar practically decided the application of Messrs Ansonia Watch Co. Also by that order although it was not before him for decision. Similarly, the following observations which he made in the order by which he later decided the application of Messrs Ansonia Watch Co. Lead to the same conclusion : "Finally after giving my fullest consideration to the facts of this case and also taking into account of my judgment dated 1-4-54 in Opposition No. 35 of 1963 and the decision given by Farooqi, J. Upholding my earlier decision, I come to the conclusion without any hesitation that the applicants are entitled to registration of the word "ANSONIA" in the form they have been using in their Application No. 38621 on the ground of honest concurrent user under section 10(2) of the Trade Marks Act, 1940."
7. The result contemplated by the Assistant Registrar has, however, fallen into jeopardy because he made an essentially com--mon decision by two separate orders from which two independent appeals could be and have been preferred. This consequence could be avoided if due attention was paid to the language of sub--section (1) of section 10 which leaves no doubt that subsection
(2) of section 10 is only an exception to the rule which is embodied in subsection (1). The rule is that no trade mark can be registered in respect of alike goods, if it is identical with or similar to th registered trade mark of another person. Subsection (2) being an exception to this rule, all the other ingredients of subsection (1) must be assumed to be present in it. Thus there needs to be a,4 registered trade mark at the time of the registration of the same or similar trade mark as the property of some other person. To my, mind a guideline is provided In subsection (1) by the following words "Save as provided in subsection (2), no trade mark shall by registered . . . . Which is identical with a trade mark . : . . . . Already on the register . . . . . . "
In the words of K. S. Shavaksha, which he has used in his commentary on section 10 (2) of the Trade Marks Act, 1940 "Where the applicant has been using a mark for a number of years and that mark conflicts with that of a registered pro--prietor, the applicant may prove honest concurrent user of the mark."
Mr. A. L. Thakur has drawn my attention to the following sentence which occurs at page 69 of the book called the Trade Marks Act, 1940 (as amended up to date) by S. Vendateswarn, 1953 Edition t "Section 10(2) does not come into operation if there is no conflicting prior registered trade mark in the name of a different proprietor on the register."
8. Mr. Wajihuddin Ahmad has contended that the pro--cedure which the Assistant Registrar adopted was not illegal because the word "permit" is used in subsection (2). This word does not appear to change the effect and the legality of the procedure which was adopted by the Assistant Registrar is open to question.
9. The Assistant Registrar purported to decide the applica--tions of both the parties by his first order, dated the 1st of April 1964 and yet postponed the decision of the second application. But both the orders are so closely interconnected that they must stand or fall together in spite of the fact that they are separate orders and the appeals which have been preferred from them are independent of each other.
10. I have set out above the inferences which I have been able to draw from two independent but alike orders, and the omission of the parties in not preferring appeals from the restricted permission granted to each of them to get the trade mark registered, but feel that a further complication may arise if I dispose of this appeal, and thereafter the Letters Patent Bench takes a different view. I therefore suggested to counsel for the parties, and they have accepted my suggestion, that this appeal may by consent be ordered by me to be beard by a Division Bench, and that it should be the same Division Bench which would hear L. P. A. No. 233 of 1966. Both counsel have agreed to the adoption of this procedure, subject of course of the right to move the Supreme Court in due course, if so advised.