Case Title: National Sewing Thread Co. Ltd. Vs. James Chadwick & Bros. Ltd.
Date of Order: May 7, 1953
Case No.: Civil Appeal No. 135 of 1952
Citation: 1953 AIR 357, 1953 SCR 1028
Name of Court: Supreme Court of India
Name of Judges: Hon’ble Justice Mehr Chand Mahajan, Justices Vivian Bose and B. Jagannadhadas
Overview
Decided by the Supreme Court of India on May 7, 1953, this landmark judgment not only resolved a dispute over the registration of a trade mark but also clarified the scope of appellate jurisdiction under the Letters Patent of the Bombay High Court. At its heart, the case pitted an Indian company’s “Vulture Brand” against an English rival’s iconic “Eagle Mark,” raising questions of deception, confusion, and the finality of judicial decisions in trade mark disputes.
Detailed Factual Background
The appellant, National Sewing Thread Co. Ltd., was an Indian entity incorporated under the Indian Companies Act, 1913, with its registered office in Chidambaram, South Arcot District, Madras. The respondent, James Chadwick & Bros. Ltd. (later assigned to J. & P. Coats Ltd.), was a British company based in Bolton, England. Since 1896, the respondents had marketed their sewing thread in India under the “Eagle Mark,” a trade mark featuring an eagle with outspread wings, widely recognized as “Eagley” or “Eagle” goods.
Around 1940, the appellants entered the market with their own sewing thread, adopting a trade mark depicting a bird with fully spread wings perched on a cotton cylinder, accompanied by the words “Eagle Brand.” The respondents objected, prompting the appellants to amend their mark by replacing “Eagle Brand” with “Vulture Brand” in 1942, though the bird’s design remained largely unchanged.
The respondents, seeking to protect their market reputation, initiated a passing-off action against the appellants in the District Court of South Arcot. This action failed due to insufficient evidence that the appellants’ goods were likely to be mistaken for the respondents’, leaving the respondents’ grievances unaddressed.
Undeterred, the appellants applied to the Registrar of Trade Marks, Bombay, in 1942 to register their “Vulture Brand” mark under Class 23 of the Trade Marks Act, 1940, claiming use since 1939. The respondents opposed this application, setting the stage for a protracted legal battle.
Detailed Procedural Background
The procedural odyssey began when the Registrar of Trade Marks, on September 2, 1949, upheld the respondents’ opposition and rejected the appellants’ application, finding that the “Vulture Brand” mark closely resembled the “Eagle Mark” and was likely to deceive or confuse the public.
The appellants appealed this decision to the Bombay High Court under Section 76 of the Trade Marks Act, 1940. On August 28, 1950, exercising original jurisdiction, the High Court reversed the Registrar’s order, directing the registration of the appellants’ mark.
The respondents appealed this ruling to a Division Bench of the Bombay High Court under Clause 15 of the Letters Patent, which permits appeals from a single judge’s judgment. On March 19, 1951, the Division Bench overturned the Single Judge’s decision, restoring the Registrar’s refusal. The appellants then sought and obtained a certificate under Section 109(c) of the Civil Procedure Code, enabling an appeal to the Supreme Court of India.
Issues Involved in the Case
- Whether the Single Judge’s judgment, rendered in an appeal under Section 76 of the Trade Marks Act, was appealable to a Division Bench under Clause 15 of the Bombay Letters Patent?
- Whether the Registrar’s discretion to refuse registration of the appellants’ trade mark—on grounds of likelihood of deception or confusion—was correctly exercised?
Detailed Submission of Parties
Appellants:
- Argued that the Single Judge’s judgment was not appealable under Clause 15, citing Indian Electric Works v. Registrar of Trade Marks (A.I.R. 1947 Cal. 49).
- Claimed that “Vulture Brand” was distinct in name and get-up from “Eagle Mark.”
- Contended that the Madras High Court’s dismissal of the passing-off action precluded the Registrar from refusing registration.
Respondents:
- Argued that Section 76 conferred appellate jurisdiction subject to Clause 15, citing National Telephone Co. v. Postmaster General ([1913] A.C. 546) and Privy Council decisions.
- Claimed visual similarity between the two marks despite the “Vulture” label.
- Emphasized that passing-off and registration proceedings are distinct in legal standards.
Judgments Cited and Their Context
- National Telephone Co. v. Postmaster General, [1913] A.C. 546 — affirmed ordinary procedural rules apply unless statute states otherwise.
- R.M.A.R.A. Adaikappa Chettiar v. Ra. Chandrasekhara Thevar, (1947) 74 I.A. 264 — upheld application of established rules unless excluded.
- Secretary of State v. Chellikani Rama Rao, (1916) I.L.R. 39 Mad. 617 — supported applicability of civil procedure to statutory appeals.
- Indian Electric Works v. Registrar of Trade Marks, A.I.R. 1947 Cal. 49 — relied on by appellants, but later overruled.
- Secretary of State v. Mask & Co., (1940) 67 I.A. 222 — deemed irrelevant as it addressed jurisdiction exclusion under different statute.
- The Gurdwara Case, (1936) 63 I.A. 180 — interpreted appellate jurisdiction under different context but applied by analogy.
Detailed Reasoning and Analysis of Judge
The Supreme Court rejected the appellants’ argument that the Single Judge’s decision was unappealable, holding that Section 76 of the Trade Marks Act imported the High Court’s ordinary procedural rules, including Clause 15.
The Court overruled Indian Electric Works as a narrow interpretation, affirming that Article 225 of the Constitution preserved procedural flexibility for High Courts exercising statutory jurisdiction.
On merits, the Court upheld the Registrar’s discretion under Section 8 of the Trade Marks Act. It noted the burden was on the appellants to prove distinctiveness to avoid deception or confusion. Despite being labeled a “vulture,” the bird on their mark resembled an eagle, likely confusing an average purchaser.
The Court distinguished the passing-off case from registration proceedings, emphasizing that registration focuses on potential confusion rather than actual deception.
Final Decision
The Supreme Court dismissed the appeal on May 7, 1953, affirming the Division Bench’s restoration of the Registrar’s refusal to register the appellants’ “Vulture Brand” mark. Costs were awarded to the respondents.
Law Settled in This Case
- Appeals under Section 76 of the Trade Marks Act, 1940, to a High Court are governed by the court’s ordinary procedural rules, including Letters Patent appeals from a Single Judge to a Division Bench, unless explicitly excluded by statute.
- Likelihood of deception or confusion under Section 8 is an independent inquiry distinct from passing-off, and the burden lies on the applicant to prove distinctiveness based on public perception.
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor – Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539
