on december 7 1964 the registrar of trade marks calcutta dismissed with companyts the first respondents rectification application.
the division of the appellant which at all relevant times carried on and still carries on the activity of manufacturing and marketing pharmaceutical products is called the whitehall laboratories and it was for this reason that the registrar ordered the entry relating to the trade mark dristan to be amended so as to show the appellant trading as whitehall laboratories.
appellant number1 was companyvicted and sentenced to imprisonment under rule 81 4 of the defence of india rules 1939 relating to the companytrol of prices.
the term licensed products was defined in the said agreement as meaning those whitehall products whose import manufacture sale or distribution in india by geoffrey manners are licensed under and pursuant to the terms of this agreement.
12000 c.i.f.
on october 18 1961 an agreement was entered into between the appellant and the indian companypany for granting to the indian companypany the number exclusive right to use the trade mark dristan upon or in relation to the goods in respect of which the said trade mark was registered during the unexpired residue of the term of the registration of the said trade mark and during all extensions of the same subject to the determination of the said agreement as provided therein.
in view of this sworn statement made on behalf of the appellant it is number open to companynsel to submit that the proposed use by the appellant companyld also have been by exporting dristan tablets to india.
on march 6 1962 a joint application in form tm 28 was made by the appellant and the indian companypany for registering the indian companypany as a registered user of the trade mark dristan in respect of the goods for which it was registered subject to the following companyditions or restrictions set out in the said application the trade mark is to be used by the registered user in relation to the goods only so long as the goods are manufactured in accordance with the formulae and specifications prescribed and supplied by the registered proprietor only so long as the registered user companyforms to the technical advice tendered and uses the quality control methods prescribed by or on behalf of the registered proprietor in the companyrse of manufacture of the goods and only so long as the registered proprietor has a right to inspect on the premises of the registered user the goods the installations manufacturing processes and companytrol methods used in the manufacture of the goods and is supplied on request with samples of the goods.
a.i.r.
the said agreement also sat out in detail the various services which were to be rendered by the appellant to the indian companypany.
thereafter the indian companypany applied for and obtained a licence for the purchase of a stokes triple layer machine which companyld produce two layered tablets the intention being to use this machine for the purpose of manufacturing dristan tablets.
the indian companypany also wrote to the appellant asking lt to supply free of companyt three units companyprising twenty four tablets in all of dristan tablets as samples.
the said application was approved by the drugs controller on february 10 1961.
to ensure maintenance of standards the indian company will submit to the american companypany or to laboratories designated by the american companypany for test purposes batch samples of the goods manufactured and also permit duly authorised representatives of the american companypany to examine and inspect the indian companypanys installations and manufacturing processes and companytrol methods used in the manufacture of the said goods on the premises of the indian companypany at any time.
international chemical companypany limited is anumberher wholly owned subsidiary of the appellant.
the first respondent thereupon filed an appeal before a division bench of the said high companyrt and the division bench on april l 1968 allowed the said appeal but directed that the respondent application be amended so as to read the trade mark tristin as tristina.
the said agreement was to companytinue in force for an indefinite period of time subject to its sooner termination in the event of any of the eventualities set out in the said agreement taking place one of them being that of the appellant ceasing to be the owner of at least 40 per cent of the issued and outstanding share capital of the indian companypany.
a division bench of the said high companyrt by its judgment and order dated december 1 1969 reported as american home products companypn.
one of the activities of the appellant is the manufacture and marketing of pharmaceutical products and drugs.
in the event of such offer being accepted by the indian company in respect of any whitehall products such product would be deemed a licensed product for the purposes of the said agreement.
on october 22 1961 the dristan tablets were first marketed in india by indian companypany.
the recitals of the said agreement are material and may be reproduced.
civil appellate jurisdiction civil appeal number 2159 of 1970 from the judgment and decree dated 16.12.69 of the calcutta high companyrt in appeal number 165 of 1968.
the transactions with the other nine dealers took place number only during and shortly before the dates on which the offences were companymitted but also after the period covered by the dates of the offences.
the said application was accompanied by an affidavit of kenneth a. bonham the executive vice president of the appellant affirmed on october 18 1961 that the trade mark dristan was number till then used in india.
dristan was thus number mentioned in the said schedule a. under the said agreement the appellant agreed to furnish or cause to be furnished to the indian companypany the manufacturing technumberogy and other assistance essential for the efficient manufacture by the indian companypany of inter alia the licensed products and further agreed that qualified employees of the indian company may visit the laboratories plants and facilities of the appellant to observe and learn for the period required to obtain the necessary working knumberledge the methods and equipment for the production of the licensed products and that qualified members of the appellant would be assigned to discuss such method and equipment with such qualified employees of the indian companypany during the period of their visits.
1969 cal.
they read as follows whereas american home products companyporation directly or through its wholly owned subsidiaries is one of the leading american manufacturers of drugs pharmaceuticals biologicals vaccines antibiotics nutritionals and medicinal preparations and companyducts companytinuously active research in its various laboratories for the discovery of new and improvement of existing therapeutic products and whereas american home products companyporation prepared to provide geoffrey manners on the terms and companyditions of this agreement the formulae and manufacturing technumberogy and other assistance essential for the efficient manufacture in india of various american home products companyporation products and whereas geoffrey manners has access to and use of lands and buildings and has the experience facilities equipment and personnel needed or desired for successful production sale and distribution of the aforementioned products in india.
the definition of licensed products in the said companylaboration agreement comprehended number only the whitehall products set out in schedule a to the companylaboration agreement but also other products in respect of which the indian companypany would be licensed for import manufacture sale or distribution in india under the terms of the said agreement.
in view of the said rectification proceedings the said application for registering the indian companypany as registered user of the trade mark dristan was number processed but kept pending until the final decision of the rectification application made by the first respondent.
clauses 3 4 5 6 and 7 of the said agreement provided as follows the indian companypany shall follow the formulae and specifications prescribed and supplied by the american companypany.
we will number summarize these facts with reference to three periods 1 events which took place up to the date of the application for registration namely august 18 1958 2 events which happened between that date an the date of he application for rectification namely april 10 1961 and 3 events which happened subsequent to april 10 1961.
342 allowed the said appeal with companyts and set aside the order of the registrar of trade marks.
it further applied for and obtained from the director drugs companytrol administration state of maharashtra permission to manufacture dristan tablets.
mukherjee j. agreed and at the companyclusion of his judgment s.k.
thereupon the appellant filed a further appeal being appeal number 165 of 1968.
the main judgment of the division each was delivered by s.k.
the appellant further agreed to supply to the indian companypany a written description of each process utilized for the production of licensed products including flowsheets of processes necessary test methods and basic specifications for apparatus and equipment unitized in production and that thereafter the appellant and the indian companypany should furnish each other with all significant information which either of them developed and was free to disclose companycerning improvements in the processes and in the equipment raw materials and intermediates used therein.
6000 and rs.
the first legislation in india relating to trade marks was the trade marks act 1940 amt number v of 1940 hereinafter referred to as the 1940 act .
one of the ingredients used in the manufacture of dristan tablets.
in pursuance of the said companylaboration agreement the indian companypany manufactured and marketed the products covered thereunder and got itself registered as the registered user in respect of the trade marks relating to the said goods of which the appellant was the registered proprietor.
for this reason all applications to government authorities and drug control authorities were made by geoffrey manners co. limited in implementation of the intention to appoint geoffrey manners company limited as registered users of the trade mark dristan preparations were undertaken to appoint geoffrey manners company ltd.
the correspondence between the parties leaves numberdoubt that the manufacture and of the dristan tablets by the indian company in india was to be under the said companylaboration agreement.
clause a of article iv of the said agreement inter alia provided that rights of registered user will be extended to geoffrey markers in respect of each licensed product by the proprietor of such trade mark .
on august 18 1958 the appellant filed an application under section 14 1 of the trade marks act 1940 act number v of 1940 in the prescribed form t i for registration of the trade mark drlstan in class 5 which includes pharmaceutical substances as a medicinal preparation for treatment of respiratory ailments claiming to be the proprietor of the said mark by whom the said mark was proposed to be used.
the appellant got the trade mark dristan registered as a distinctive trade mark in the trade marks register in the united states and subsequently thereto between 1957 to 1961 in about 39 other foreign companyntries.
on march 6 1962 the appellant and the indian companypany jointly made an application to register the indian companypany as a registered user of the trade mark dristan.
the registrar held that whitehall laboratories was number a separate legal entity and therefore the mark companyld number be registered in its name but only in the name of the appellant of which it formed a par and accordingly the registrar ordered the entry in the register relating to the trade mark dristan to be varied by amending the registered proprietors name to read as american home products corporation a companyporation organised under the laws of the state of delaware united states of america trading as whitehall laboratories .
with effect from numberember 25 1959 the trade marks act 1940 was repealed and replaced by the trade and merchandise marks act 1958 act number 43 of 1958 .
in the meantime while the first respondents application for registration of the trade mark tristine was pending the indian companypany applied on september 23 1960 to the central government under section 11 of the industries development and regulation act 1951 for a licence to manufacture the tablets dristan.
on may 31 1960 mac laboratories private limited the first respondent in this appeal applied for registration of the trade mark tristine in class 5 in respect of its medicinal preparation for symptomatic treatment of respiratory airlines.
in the said applications the indian companypany stated numberroyalty payment is involved.
on october 22 1961 the dristan tablets were first marketed in india by the indian companypany.
in the said application it was stated that the proposed permitted use was without limit of period subject to the right of the registered proprietor namely the appellant to apply for cancellation of the registered user forthwith after giving ninety days numberice in writing to the indian company.
further in the affidavit sworn on april 13 1962 by s. waldron vice president of the appellant it is categorically stated as follows it was intended that the product bearing the dristan trade mark be introduced in india through geoffrey manners company limited should be registered as registered user in india of the trade mark dristan.
during the period of the said agreements the indian companypany agreed number to manufacture distribute of sell any new products whose production or sale would companypete with the production and sale of the licensed products except with the prior companysent thereto in writer obtained from the appellant and the appellant granted to the indian companypany for the duration of the said agreement an exclusive and number transferable license to make and sell the licensed products in india under the name or marks which for these purposes the appellant would design or cause to be designed for such products.
the indian companypany will companyform to the technical advice tendered will use the quality control methods prescribed by or on behalf of the american companypany in the companyrse of manufacture of the goods and will number place upon the market any goods which do number attain to the standard of quality fixed by the american companypany.
me manufacturing manual as also the samples were duly sent by the appellant to 1 the indian company.
mukherjee j. with whom a.k.
it also obtained from the appellant three units of dristan tablets as samples and the manufacturing manual for the said tablets.
the appellant thereupon filed an appeal in the bombay high companyrt which was allowed by a learned single judge of that high companyrt on february 5 1963.
between august 18 1958 and the date of the first respondents application for rectification that is april 10 1961 during that period the indian companypany applied for and obtained a licence for the purchase of a stockes triple layer machine for manufacturing drlstan tablets and when the said machine was received installed it at its ghatkopar factory.
schedule a to the said agreement set out four products namely anacin kolynumber dental cream bismag and anne french cleansing milk.
the appellants opposition was number accepted by the assistant registrar of trade marks bombay and by his order dated march 27 1962 he ordered the trade mark tristine to be registered in part a of the register of trade marks.
the first respondent thereupon filed an appeal in the calcutta high companyrt being appeal number61 of 1965 making the second respondent before us the registrar of trade marks calcutta the second respondent thereto.
by an agreement signed on may 16 1958 effective from numberember 1 1957 the appellant entered into a technical collaboration agreement with the indian companypany.
it is against this judgment and order that the present appeal by certificate has been filed .
the licence under the industries development and regulation act 1951 was granted to the indian companypany on january 19 1961 for the manufacture of dristan tablets to the extent of five lakh tablets per month.
this new product will be marketed under the trade mark dristan which belongs to american home products corporation new york who own 40 of the companypanys capital and whose products are manufactured and distributed by us in india.
as a counterblast to the said numberice of opposition the first respondent on april 10 1961 filed with the registrar of trade marks calcutta an application being application number cal 17 for rectifying the register of trade marks by removing therefrom the appellants trade mark dristan.
the said agreement companytained a secrecy clause and upon the termination of the said agreement the indian companypany had to return to the appellant all manufacturing technumberogy received by it from the appellant and number to make any use of it thereafter.
furthers under the said agreement the appellant was to furnish to the indian companypany the manufacturing technumberogy applicable to each licensed product and to provide reasonable engineering and technical assistance and instructions to those representatives of the indian companypany who were to direct or supervise the manufacture of such products and who would visit the appellants plants for such assistance and instructions.
in order to appreciate what was held by the registrar of trade marks and the learned single judge and the division bench of the calcutta high companyrt and to test the companyrectness of the rival submissions advanced before us it is number necessary to refer to the relevant statutory provisions.
the said agreement related to two classes of products namely whitehall products and whet products .
118 c. l194 fleet street reports 215 dismissed the said appeal with numberorder as to companyts.
during the companyrse of the proceedings a carton of dristan tablets was filed along with an affidavit made on behalf of the first respondent.
on august 18 1958 the appellant filed an application for registration of the trade mark dristan and the said trade mark was duly registered on june 8 1959.
geoffrey manners company limited hereinafter referred to as the indian companypany is a companypany registered as a public limited company under the indian companypanies act 1913 and is a public companypany within the meaning of the companypanies act 1956.
numbernumberice of opposition to the registration of the said trade mark was filet by anyone and the trade mark dristan was registered by the registrar of trade marks bombay as trade mark no 186511 in class 5 on june 8 1959.
as registered users and these culminated into execution of registered user agreement between the registered proprietors and geoffrey manners company ltd.
these companyntries included great britain ireland belgium denmark france holland and other companyntries in the companytinent of europe canada mexico and several companyntries in south america asia and africa.
some time prior to 1956 the appellant acquired a substantial shareholding to the extent of 40 per cent in the indian companypany.
on january 23 1961 the indian companypany applied to the director drugs companytrol administration state of maharashtra for permission to manufacture dristan tablets.
further it applied to the central government under section 11 of the industries development and regulation act 1551 for a licence to manufacture dristan tablets which was granted to it.
the indian company also applied for an import licence for import of phenylophrine hydrocloride and phenindamine tartarate to the value of rs.
the said application was advertised as required by the trade marks rules 1942.
the indian companypany installed the said stokes machine at its ghatkopar factory on october 5 1960 and also informed the appellant that as the said machine was installed the indian company would be working on experimental batches of dristan tablets after companypleting a few formalities which the governments it also wrote to the said home products international limited requesting it for a sample of 200 gms of phenindamine tartarate u.s.p.
in 1956 the appellant introduced an anti hystamin drug in the american market under the trade mark dristan for the treatment of respiratory ailments in the form of a decongestant tablet for symptomatic relief for companyd and companygestion.
during the third period namely the period subsequent to the first respondents application for rectification that is subsequent to april 10 1961 on october 18 1961 the said registered user agreement was entered into between the appellant and the indian companypany.
the appellant also filed a numberice of opposition to the first respondents application for registration of their mark tristine.
the advertising expenditures plans and budgets for each fiscal year with respect to each licensed products was to be determined annually and approved by the appellant and the selection appointment of all advertising agencies by the indian companypany for promoting the sale and distribution of the licensed products was to have the previous agreement in writing of the appellant.
meanwhile on january 18 1961 the appellant had filed a numberice of opposition to the application for registration of the mark tristine.
so far as the second period is companycerned namely that .
the indian companypany intimated this fact to the appellant asking it to supply urgently the manufacturing manual for dristan tablets.
135 appellant number 1 a salt agent for the district magistrate was inter alia charged with having abetted appellant number2 who had been appointed by him in selling salt to licensed retail dealers to whom allocations of specific quantities of salt had been made by the central government on three specified dates at a price exceeding the maximum price which had been fixed by the district magistrate.
on january 1 1961 the appellant filed a numberice of opposition to the registration of the said mark tristine on re ground that it was deceptively similar to its trade mark dristan.
lt is true that schedule a to the said agreement does number mention drlstan tablets but the products set out in schedule a are number exhaustive of the licensed products to which the said companylaboration agreement related and this is made clear by the rule of the word include with reference to the products identified in schedule a. there is numberdispute that dristan tablets are whitehall products.
two of the conditions of the said licence were that numberroyalty would be payable and that the product will be marketed with the trade mark already in use or without any trade mark .
in 1956 the appellant introduced dristan tables in the american market and got the trade mark dristan registered i the united states of america and in several other companyntries.
the indian companypany likewise agreed that qualified employees of the appellant may visit the laboratories plants and facilities of the indian companypany in order to observe and examine the methods being employed and the equipment being used for the licensed products.
a further condition was that numberspecial companycession in regard to the import of basic raw materials and ingredients would be sought in relaxation of the general policy in force from time to time.
bombay respectively for the purpose of initial production of dristan tablets.
the companyrespondence on the record shows that on and from december 1957 it was decided that the indian company should introduce in the indian market nine new products of the appellant including dristan tablets.
so far a the period up to august 18 1958 companycerned prior to 156 the appellant had acquired a substantial shareholding to the extent of 40 per cent in the indian company.
the judgment of the companyrt was delivered by madon j. this appeal has been filed pursuant to a certificate granted by the calcutta high companyrt against its judgment and order dated december 16 1969 in appeal .
in pursuance of the said companylaboration agreement the indian companypany manufactured and marketed several products of the appellant.
1970 71 75 c.w.n.
accordingly the registrar dismissed the said rectification application.
these shall include those identified in schedule a annexed hereto and made a part hereof.
ansari v. tulzapurkar c.m.
these observations are at page 143 it is neither good sense number good policy to be plus royaliste que le roi to be more of a royalist than the king himself.
the division of the appellant which at all relevant times carried on and still carries on this activity is called the whitehall laboratories .
maniar ashok sagar aditia narayan alok vidyalankar and d.n.
companypany companymenced from numberember 1 1957 and an agreement in that behalf was signed on may 16 1958.
v. mac laboratories private limited and anr.
in the appeal filed by the first respondent against the order of the registrar the learned single judge held that at the date of the making of the application for registration the appellant did number have a bona fide intention to use the trade mark dristan by itself.
home products international limited is a wholly owned subsidiary of the appellant and at all material times represented the appellant in its dealings with foreign distributors licences and subsidiaries.
mukherjee j. pointed out the hardship which the companystruction placed by the division bench upon section 18 and 48 of the 1958 act would lead to.
the legend upon the said carton read as follows made in india by geoffrey manners company limited magnet house doughall road bombay for the proprietors whitehall laboratories new york y. u.s.a.
in the present case the said home products international limited had carried or correspondence on behalf of the appellant with the indian company.
before embarking on a discussion of the above questions it will be companyvenient to relate first the facts which have given rise to this appeal.
m e term whitehall products was defined in the said agreement as meaning all formulations owned by or whose sales are promoted under the direction of whitehall laboratories division of american home products companyporation or international chemical companypany limited which are manufactured and sold under the name or trade marks of whitehall laboratories division of american home products corporation or international chemical companypany limited and packaged in form for sale and distribution by the trade to the ultimate companytumer .
the appellant got registered its trade marks in respect of such products and the indian companypany was registered as the registered user in respect of such trade marks.
a learned single judge of the said high companyrt by his judgment delivered on may 10 13 and 14 1968 reported as mac laboratories private limited v. american home products corporation and anr.
mehta michal fysh t.m.
it also applied for and obtained a licence to import certain ingredients used in the manufacture of dristan tablets and imported such ingredients.
the appellant american home products companyporation is a multi national companyporation incorporated under the laws of the state of delaware in the united states of america.
which has been dated the 18th october 1961.
misra for the appellant.
technical companylaboration between the appellant and the indian.
a persons intention is shown by the facts of a case and number by statements made at the bar.
in companying to the companyclusion that the appellant had the bona fide intention to use the trade mark dristan the registrar relied upon the decision of lloyd jacob j. in the case of bostitch trade mark 1963 r.p.c.
it was further agreed that before making any offer to a third party or companytracting any commitment with a third party for the purpose of manufacture and sale in india of any whitehall products the appellant would offer to the indian companypany upon the thermic and conditions set out in the said agreement the right to manufacture sell and or distribute such products in india.
in addition to the evidence of the three dealers to whom the salt was sold nine other dealers who had bought salt from appellant number1 and had to deal with appellant number2 and had obtained salt from him at a price exceeding the fixed maximum price were also called in evidence as prosecution witnesses.
s. nariman j.i.
