Eagle,
Vulture, or Deception? Trade Mark Registration, Confusion and Appellate
Procedure
An Analytical
Study of National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. —
AIR 1953 SC 357
Written By:
Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High
Court of Delhi
Introduction
The judgment of the Supreme
Court of India in National Sewing Thread Co. Ltd. versus James Chadwick and
Bros. Ltd. (with J. & P. Coats Ltd. as Assignee), decided on 7th May 1953,
is one of the early and foundational pronouncements of the Supreme Court on the
law of trade marks in independent India. Reported as AIR 1953 SC 357 and
bearing the neutral citation MANU/SC/0063/1953, this decision addressed two
distinct but equally important questions: one relating to court procedure and
the right of appeal within the High Court system, and another touching upon the
very heart of trade mark law, namely the standard to be applied when deciding
whether a trade mark ought to be refused registration on the ground that it is
likely to deceive purchasers or cause confusion in the market.
The case arose out of a dispute
between two companies that manufactured and sold sewing thread — one an Indian
company operating from South Arcot in the then Province of Madras, and the
other a British company that had been exporting its products to India since
1896 under a well-known eagle device mark. The Indian company applied for
registration of a bird device mark which had initially been described as an
Eagle Brand but was later renamed Vulture Brand after objection. The Registrar
of Trade Marks refused registration, a Single Judge of the Bombay High Court
reversed that refusal, and a Division Bench of the Bombay High Court in turn
restored the Registrar's order. The Supreme Court was then called upon to
decide whether the Division Bench had the power to entertain that second appeal
at all under clause 15 of the Letters Patent of the Bombay High Court, and if
so, whether the Division Bench was correct in reversing the Single Judge and
restoring the Registrar's refusal.
The importance of this case goes
beyond the facts of the parties before the court. It settled the law on how
appellate jurisdiction conferred by a special statute such as the Trade Marks
Act, 1940, is to be treated within the framework of the established High Court
system, overruling a contrary view of the Calcutta High Court in Indian
Electric Works versus Registrar of Trade Marks, reported as MANU/WB/0016/1946
and AIR 1947 Cal 49. It also laid down a clear and enduring standard for
assessing likelihood of confusion in trade mark registration disputes — the
standard of the average man of ordinary intelligence — which continues to
influence Indian trade mark law to this day.
Factual and Procedural Background
National Sewing Thread Co. Ltd.,
the appellant before the Supreme Court, was a limited liability company
incorporated under the Indian Companies Act, 1913. Its registered office was at
Chidambaram in the South Arcot District in the Province of Madras. The company
was engaged in the business of manufacturing cotton sewing thread, which it
sold in the Indian market.
James Chadwick and Bros. Ltd.,
the respondent, was a limited liability company registered under the English
Companies Act, with its registered office at Eagley Mills, Bolton, in England.
The company also manufactured sewing thread. One of its most prominent trade
marks was a device consisting of an Eagle with outspread wings, popularly known
as the Eagle Mark. This mark had been in use since at least 1896, when it was
first advertised in the Calcutta Exchange Gazette of 5th June 1896. From that
time onwards, sewing thread bearing the Eagle Mark was regularly imported into
India and sold here on an extensive scale, acquiring considerable recognition
among Indian consumers.
Around the year 1940, the
appellant company began selling cotton sewing thread under a mark that featured
the device of a bird with wings fully spread out, perched on a cylinder of
cotton sewing thread. This mark also carried the words Eagle Brand and the name
of the appellant company. The resemblance to the respondents' established Eagle
Mark was apparent, and the respondents promptly objected. In response to the
objection, the appellant substituted the words Vulture Brand in place of Eagle
Brand. Apart from this change in the descriptive name, however, every other
aspect of the mark remained identical. The bird device was unchanged; it was
the same bird with the same posture, merely given a different label.
In 1942, the appellant applied
to the Registrar of Trade Marks at Bombay for registration of this amended mark
as a trade mark in Class 23, which covers cotton sewing thread. The appellant
claimed that the mark had been in use by them since the year 1939. The
respondents filed a notice of opposition to this application under Section
15(2) read with Rule 30 of the Trade Marks Act, 1940. Separate from the
registration proceedings, the respondents also initiated a passing off action
in the District Court of South Arcot against the appellant, seeking to restrain
the appellant from using a mark so similar to their Eagle Mark. However, this
passing off action failed. The District Court found that the evidence placed on
record by the respondents was meagre and that they had not proved that there
was any real probability of purchasers exercising ordinary caution being
deceived into buying the defendants' goods under the impression that they were
the plaintiffs' goods. The respondents' civil remedy through the courts had
thus not succeeded.
Turning back to the registration
proceedings, the Registrar of Trade Marks passed his order on 2nd September
1949, allowing the respondents' opposition and rejecting the appellant's
application for registration. The Registrar concluded that the appellant's mark
so nearly resembled the mark of the respondents as to be likely to deceive or
cause confusion. He also held that calling the bird in the mark a Vulture when
the device was actually that of an Eagle was in itself misleading and liable to
cause confusion.
Aggrieved by the Registrar's
order, the appellant preferred an appeal to the Bombay High Court under Section
76 of the Trade Marks Act, 1940. The appeal was heard by Mr. Justice S. C. Shah
sitting as a Single Judge. Justice Shah allowed the appeal, set aside the order
of the Registrar, and directed the Registrar to register the appellant's mark
as a trade mark. The respondents were not willing to accept this outcome and
preferred a further appeal against the judgment of Justice Shah under Clause 15
of the Letters Patent of the Bombay High Court, which provided for appeals from
the judgment of a single judge to a Division Bench of the High Court. The
Division Bench allowed this appeal, reversed the judgment of Justice Shah, and
restored the original order of the Registrar refusing registration. It was
against this judgment of the Division Bench that the appellant filed the
present appeal before the Supreme Court of India on a certificate under Section
109(c) of the Code of Civil Procedure, 1908.
The Dispute
The dispute before the Supreme
Court had two dimensions, each distinct and important in its own right.
The first and more procedural
question was whether the Division Bench of the Bombay High Court had the
jurisdiction and the authority to entertain an appeal from the judgment of Mr.
Justice Shah. The appellant's case was that the appeal before the High Court
had been filed under Section 76 of the Trade Marks Act, 1940, which simply
conferred a right of appeal to the High Court from any decision of the
Registrar without saying anything further about how that appeal should proceed
within the High Court. The argument was that since the Trade Marks Act was a
special statute that had created its own regime for trade mark registration,
Clause 15 of the Letters Patent of the Bombay High Court — which provided for
appeals from single judge decisions to a Division Bench — could not be applied
to judgments delivered in the exercise of appellate jurisdiction conferred by
this special statute. The appellants also argued that Clause 15 of the Letters
Patent required the single judge's decision to have been delivered pursuant to
Section 108 of the Government of India Act, 1915, which dealt with the High
Court's power to make rules for the exercise of its jurisdiction. They
contended that a judgment in a trade mark appeal under Section 76 of the Trade
Marks Act could not be said to have been delivered pursuant to Section 108 of
the Government of India Act. In support of these arguments the appellant relied
on the Calcutta High Court's decision in Indian Electric Works versus Registrar
of Trade Marks, MANU/WB/0016/1946, which had taken the view that a Letters
Patent appeal did not lie from a single judge decision in a Trade Marks Act
appeal.
The second dispute was about the
merits — whether the Registrar was right in refusing to register the
appellant's Vulture Brand mark on the ground that it was likely to deceive
purchasers or cause confusion, and whether the Division Bench was right in
restoring the Registrar's order. The appellant argued that the Madras High
Court's finding in the earlier passing off action — namely, that the
respondents had failed to prove that buyers would be deceived — should be
treated as a conclusive finding on the question of confusion that would bind
the Registrar's proceedings as well. The respondents contended that the two
proceedings were legally distinct, that the standards applied in a passing off
action and in a registration opposition are different, and that the Registrar's
independent conclusion of likely confusion was fully justified.
Reasoning and Analysis of the Court
The Supreme Court, speaking
through Justice Mehr Chand Mahajan with Justices Vivian Bose and B.
Jagannadhadas concurring, addressed the two questions in turn, providing
elaborate and carefully reasoned answers to each.
On the Procedural Question: Was the Division Bench Appeal Competent?
The Court began with the
jurisdictional question. It referred to the well-settled rule of law,
articulated by Viscount Haldane L.C. in National Telephone Co. Ltd. versus
Postmaster-General, reported in [1913] AC 546, that when a statute directs that
an appeal shall lie to a court already established, that appeal must be
regulated by the practice and procedure of that court, and any general right of
appeal from the decisions of that court likewise attaches. This principle was
further affirmed by the Privy Council in R.M.A.R.A. Adaikappa Chettiar versus
Ra. Chandrasekhara Thevar, reported in (1947) 74 Indian Appeals 264, and in
Secretary of State for India versus Chellikani Rama Rao, reported in ILR (1916)
Mad 617. The combined effect of these decisions was that when a special statute
confers appellate jurisdiction on an established High Court without more, the
High Court exercises that jurisdiction in the same manner as it exercises its
ordinary appellate jurisdiction, with all the attendant procedural incidents
including the right of appeal from a single judge to a Division Bench.
Applying this principle, the
Supreme Court held that Section 76 of the Trade Marks Act, 1940, having
conferred a right of appeal to the High Court without prescribing any special
procedure, the High Court was seized of that appellate jurisdiction in its
ordinary capacity. Once the High Court exercised that jurisdiction through a
single judge, the judgment of that single judge became subject to appeal to the
Division Bench under Clause 15 of the Letters Patent of the Bombay High Court,
just as any other single judge decision would be. There was nothing in the
Trade Marks Act that expressly or by necessary implication excluded the
operation of Clause 15 of the Letters Patent.
On the argument about Section
108 of the Government of India Act, 1915, the Court held that Section 108 was
an enabling enactment that conferred on the High Courts the power to make rules
for the exercise of their jurisdiction by single judges or by Division Courts. This
power was not frozen or limited to the jurisdiction that the High Court
possessed when the Government of India Act, 1915, came into force. The words of
Section 108 — 'original and appellate jurisdiction vested in the Court' — could
not be read as meaning only the jurisdiction then vested. The power was dynamic
and covered all jurisdiction that the High Court might exercise from time to
time, including jurisdiction conferred by subsequent legislation such as the
Trade Marks Act, 1940. The Court further held that when Article 225 of the
Constitution of India replaced Section 108 of the Government of India Act,
1915, the same power continued and was reaffirmed. The reference to Section 108
in Clause 15 of the Letters Patent had to be read as a reference to the
corresponding provisions in the later statutes, following the canon of
construction recognised in Section 38 of the Interpretation Act and Section 8
of the General Clauses Act.
Having analysed the Calcutta
High Court's judgment in Indian Electric Works versus Registrar of Trade Marks,
MANU/WB/0016/1946, the Supreme Court expressed its disagreement with that
decision in clear and direct terms. The Calcutta High Court had held that the
appellate jurisdiction of the Calcutta High Court under Clause 16 of its
Letters Patent was limited and fixed, covering only those appeals that related
to jurisdiction existing at the time of the Letters Patent or under Acts passed
until 1865, and that jurisdiction conferred by a later statute such as the
Trade Marks Act created a separate new jurisdiction not governed by the
ordinary Letters Patent appeal provisions. The Supreme Court found this
reasoning to be based on a two-fold error. First, it failed to give effect to
Clause 44 of the Calcutta Letters Patent, which expressly preserved the power
of the Indian legislature to modify the appellate jurisdiction of the High
Court. Second, it read Section 108 of the Government of India Act, 1915, too
narrowly, treating it as limited to jurisdiction existing at the commencement of
that Act. The Supreme Court overruled Indian Electric Works versus Registrar of
Trade Marks, MANU/WB/0016/1946, holding that the Calcutta High Court's decision
was wrong and had given too narrow and restricted a construction to the
relevant provisions.
The Court also dismissed the
argument that the Calcutta High Court's appellate jurisdiction was narrower
than that of other High Courts such as the Patna, Lahore, Rangoon and Nagpur
High Courts, whose Letters Patent expressly included future legislation within
their appellate scope. The Supreme Court found it inconceivable that the oldest
and most prominent High Court would have been given lesser powers than the
newer ones, and held that Clause 44 of the Letters Patent of the Calcutta High
Court served precisely the same purpose as the express provisions in the newer
charters.
On the Merits: Was the Mark Likely to Deceive or Cause Confusion?
Turning to the substantive
merits, the Supreme Court examined Section 8 of the Trade Marks Act, 1940. The
relevant part of that section read: 'No trade mark nor part of a trade mark
shall be registered which consists of, or contains, any scandalous design, or
any matter the use of which would by reason of its being likely to deceive or
to cause confusion or otherwise, be disentitled to protection in a court of
justice.' The Court noted that under this section, the Registrar has to refuse
registration of a mark that is likely to deceive or cause confusion entirely
independently of whether the mark is identical or closely similar to any other
registered trade mark. The assessment is not merely a comparison of two marks
side by side; it requires the Registrar to look at all the circumstances of the
case and arrive at a conclusion about the likely reaction of purchasers to the
mark in question.
The Court laid down clearly that
the burden of proving that a mark is not likely to deceive or cause confusion
lies on the applicant for registration. It is the applicant who must satisfy
the Registrar that his mark does not fall within the prohibition of Section 8.
The test to be applied in deciding likelihood of deception or confusion is not
the reaction of a particularly careful, sophisticated or expert buyer. Rather,
the Court held that the relevant standard is how a purchaser who must be looked
upon as an average man of ordinary intelligence would react to the particular
trade mark — what association he would form by looking at it, and in what
respect he would connect the mark with the goods he is purchasing. This
formulation became one of the standard articulations of the consumer test in
Indian trade mark law.
Applying this test to the facts,
the Court noted that the goods sold under the respondents' Eagle Mark were well
known in the Indian market and were commonly asked for by customers using the
words 'Eagley' or 'Eagle'. The particular and distinctive feature of the
respondents' mark that had become associated in the mind of the purchasing
public with the respondents' goods was the representation of an eagle. The
critical question was therefore whether the bird device in the appellant's
Vulture Brand mark was likely to be mistaken by an average man of ordinary
intelligence for an eagle. The Court's answer was unequivocal: yes. An average
buyer of ordinary intelligence looking at the appellant's bird device would
most naturally and readily mistake it for an eagle. And if such a buyer had
asked for Eagle goods and received goods bearing the appellant's bird device
mark, it was not likely that he would reject them on the ground that the bird
on the packaging was not an eagle.
The Court then turned to what it
clearly regarded as the most telling fact in the case. Two years before the
application for registration was filed, the appellant company itself had
described the very same bird as an Eagle and had called the brand Eagle Brand.
It was only after the respondents' objection that the appellant renamed the
bird a Vulture. The Supreme Court found this explanation — that the original
use of Eagle Brand was an honest mistake — impossible to accept. A company does
not spontaneously and innocently call a bird an Eagle, only to later discover
it was actually a Vulture. The Court observed with some sharpness that the
appellant had simply camouflaged an Eagle into a Vulture by the act of calling
it such, while leaving the device itself entirely unchanged. Looking at the
bird in the appellant's mark, the Court found that it did not in any way
represent a vulture or look like a vulture of any form or shape. The bird was,
in substance and in visual impression, an eagle seated in a different posture.
This deliberate renaming while retaining the identical device could only have
one purpose — to continue to trade on the association of the eagle device with
the respondents' goods while escaping a direct objection on identity of name.
Finally, the Court addressed the
appellant's argument that the Madras High Court's decision in the passing off
action — finding that the respondents had not proved likelihood of deception —
should operate as a conclusive determination of the question of confusion in
the registration proceedings. The Court rejected this argument firmly. It held
that the considerations relevant in a passing off action are somewhat different
from those applicable in registration proceedings under the Trade Marks Act. In
a passing off action, the burden is on the plaintiff to prove on the evidence
placed before the court that the defendant's goods are likely to be passed off
as the plaintiff's goods. The Madras High Court had found the evidence placed
by the respondents in that action to be meagre and insufficient for that
purpose. The registration proceedings, on the other hand, require the Registrar
to form an independent judgment under Section 8 of the Trade Marks Act on
whether the mark applied for is likely to deceive or cause confusion, assessed
from the perspective of the average purchaser and in light of all the
circumstances. The failure of a passing off action for want of evidence cannot
conclude this statutory inquiry against the opponent. The two proceedings are
legally and evidentially independent.
Final Decision of the Court
The Supreme Court, by its
judgment delivered on 7th May 1953, dismissed the appeal filed by National
Sewing Thread Co. Ltd. with costs. The Court upheld both the procedural and
substantive rulings of the Division Bench of the Bombay High Court. On the
procedural question, it held that the Division Bench was fully competent to
entertain the Letters Patent appeal from the judgment of Mr. Justice Shah,
since Section 76 of the Trade Marks Act having conferred appellate jurisdiction
on the Bombay High Court without more, all the procedural incidents of that Court
including Clause 15 of its Letters Patent applied to judgments delivered in
exercise of that jurisdiction. On the merits, the Court affirmed the
restoration of the Registrar's order refusing registration of the appellant's
Vulture Brand mark, holding that the appellant had failed to discharge the
burden of showing that its mark was not likely to deceive or cause confusion in
the minds of average purchasers. The Calcutta High Court's judgment in Indian
Electric Works versus Registrar of Trade Marks, MANU/WB/0016/1946, was
expressly overruled.
Points of Law Settled in the Case
This judgment settled several
important principles of law that have endured in Indian jurisprudence for over
seven decades. The first and perhaps procedurally most significant principle
concerns the relationship between special statutory appellate jurisdiction
conferred on a High Court and the ordinary procedural framework of that Court.
The Supreme Court settled that when a special statute confers a right of appeal
to a High Court without specifying any special procedure, that appeal is
governed by the ordinary rules and procedure of the High Court including all
rights of further appeal available under the Court's charter such as the
Letters Patent. A special statute does not, merely by conferring jurisdiction,
create a self-contained procedural regime isolated from the court's general
appellate structure.
The second principle concerns
the scope of Section 108 of the Government of India Act, 1915, and its
successors including Article 225 of the Constitution of India. The Court held
that the power of the High Court to make rules for the exercise of jurisdiction
by single judges or Division Benches is not frozen to the jurisdiction existing
at the time of a particular statute's enactment. It is a continuing and
flexible power that applies to all jurisdiction vested in the High Court from
time to time, whether existing or subsequently conferred.
Third, the Court overruled the
Calcutta High Court's decision in Indian Electric Works versus Registrar of
Trade Marks, MANU/WB/0016/1946, which had held that a Letters Patent appeal did
not lie from a single judge decision in a trade mark registration appeal. This
clarification brought uniformity in the understanding of appellate procedure in
trade mark matters across the High Courts of India.
Fourth, on trade mark law, the
Court settled the standard for assessing likelihood of deception or confusion
under Section 8 of the Trade Marks Act, 1940. The relevant test is the reaction
of the average man of ordinary intelligence — neither an expert nor a
particularly careless person — to the mark in question. The Registrar must
assess what mental association the average consumer would form when he sees the
mark and how he would connect it with the goods he intends to purchase.
Fifth, the Court made clear that
the burden of proving that a mark is not likely to deceive or cause confusion
rests on the applicant for registration, not on the opponent. It is for the
applicant to satisfy the Registrar that his mark does not fall within the
statutory prohibition.
Sixth, the Court confirmed that
the assessment of likelihood of confusion or deception in registration
proceedings under the Trade Marks Act is independent of and not concluded by
findings made in a passing off action between the same parties. The two
proceedings operate under different standards, with different burdens of proof,
and a result in one does not govern the outcome in the other.
Seventh, the Court laid down
that a person who deliberately changes only the name of a device while
retaining the identical visual impression in order to escape an objection
cannot claim that the resulting mark is free of confusion. If the device itself
conveys the same idea as the mark objected to, calling it by a different name
is merely a cosmetic exercise and does not address the likelihood of confusion.
Case Details
Title: National Sewing Thread Co. Ltd. Vs James
Chadwick and Bros. Ltd.
Date of Order: 7th May 1953
Case Number: Appeal under Section 109(c) of the Code of
Civil Procedure, 1908 (Civil Appeal before the Supreme Court of India)
Neutral Citation: MANU/SC/0063/1953
Equivalent Citations: AIR 1953 SC 357; 1954 (56) BomLR 21; (1953)
II MLJ 215 (SC); [1953] 4 SCR 1028
Court: Supreme Court of India
Hon'ble Judges: Hon'ble Mr. Justice Mehr Chand Mahajan,
Hon'ble Mr. Justice Vivian Bose, and Hon'ble Mr. Justice B. Jagannadhadas
Acts and Provisions
Discussed: Trade Marks Act,
1940 — Sections 8 and 76; Constitution of India — Article 225; Government of
India Act, 1915 — Section 108; Code of Civil Procedure, 1908 — Section 109;
Clause 15 of the Letters Patent of the Bombay High Court
Cases Referred: National Telephone Co. Ltd. versus Postmaster-General
[1913] AC 546; R.M.A.R.A. Adaikappa Chettiar versus Ra. Chandrasekhara Thevar
(1947) 74 IA 264; Secretary of State for India versus Chellikani Rama Rao ILR
(1916) Mad 617; Secretary of State versus Mask and Co. 67 IA 222 (Gurdwara
Case: 63 IA 180)
Case Overruled: Indian Electric Works versus Registrar of
Trade Marks [MANU/WB/0016/1946; AIR 1947 Cal 49]
Disclaimer: Readers are advised not to treat this as
substitute for legal advise as it may contain errors in perception,
interpretation, and presentation
Written By: Advocate Ajay Amitabh
Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suggested SEO Titles for Legal Journal
1. Eagle Disguised as Vulture:
Supreme Court on Trade Mark Confusion and the Average Consumer Test — National
Sewing Thread Co. v. James Chadwick AIR 1953 SC 357
2. Letters Patent Appeal in
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— MANU/SC/0063/1953 Explained
3. Trade Mark Registration and
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Headnote
The Supreme Court of India, by
its judgment dated 7th May 1953 in National Sewing Thread Co. Ltd. versus James
Chadwick and Bros. Ltd. and Another, reported as AIR 1953 SC 357 and
MANU/SC/0063/1953, dismissed an appeal challenging the refusal of the Registrar
of Trade Marks to register the appellant's Vulture Brand mark for cotton sewing
thread, and settled two important questions of law. On the procedural question,
the Court held that when Section 76 of the Trade Marks Act, 1940, conferred a
right of appeal to the High Court without prescribing any special procedure,
the appeal to the High Court was governed by the ordinary practice and
procedure of that Court and all procedural incidents including the right of a
further appeal from a single judge to a Division Bench under Clause 15 of the
Letters Patent of the Bombay High Court applied. Section 108 of the Government
of India Act, 1915, and its successor Article 225 of the Constitution of India,
conferred a continuing and flexible power on the High Court to make rules for
the exercise of all its jurisdiction whether existing or subsequently
conferred, and this power was not frozen at the date of the relevant statute.
The Calcutta High Court's contrary decision in Indian Electric Works versus
Registrar of Trade Marks, MANU/WB/0016/1946, was expressly overruled. On the
merits, the Court held that under Section 8 of the Trade Marks Act, 1940, the
Registrar must refuse registration of a mark likely to deceive or cause
confusion, and the test to be applied is how an average man of ordinary
intelligence would react to the mark — what association he would form and how
he would connect the mark with the goods he is purchasing. The burden of
proving the mark is not likely to deceive or cause confusion rests on the
applicant. The Court found that the appellant's bird device, though renamed a
Vulture, was in visual impression indistinguishable from an Eagle and was
likely to deceive average purchasers familiar with the respondents'
long-established Eagle Mark. The fact that the appellant's own company had
originally described the identical bird as an Eagle and sold it under the name
Eagle Brand before renaming it Vulture Brand on objection was treated as
demonstrating an intent to trade on the respondents' goodwill. The Court
further held that a finding in favour of the applicant in a passing off action
on the ground of insufficient evidence does not conclude the question of
likelihood of confusion in trade mark registration proceedings, as the two
proceedings operate under different standards and burdens of proof. The appeal
was dismissed with costs.
