Civil Procedure-Framing of issues-Burden upon court to frame issues

Trade Marks=-Unregistered-s-Rtght of owner of unregistered trade mark to op-
pose the registration of a simi/or mark

I. The duty is upon the trial judge to frame the issues upon a trial,
even though the parties are represented by advocates and pleadings have
been exchanged, and if the trial reveals additional issues which the judge
should have framed, but did not. the reviewing court will return the case for
additional hearing.

2. Where a manufacturer of cotton piece goods registered in 1931 a
trade mark consisting of a "gabbana" standing upright on a circular mat,
but later varied the mark to include a rectangular surround ornamented by
Arabic lettering, it was held than in a SUit opposing the registration of a
rival mark he was entitled to seek protection for both the registered and
unregistered portions of his mark.

Civil Justice Ordinance 1929, s. 72 (3).

Trade Marks Ordinance 1931. ss. 6 (4),6 (9),10, 17.

- Court: Creed, C.J., Bennett and Cumings 1.1.

Revision

The applicant-plaintiff (called "opponent" in the judgement) was
the registered proprietor of a trade mark which was published in the
Sudan Government Gazette No. 544, April 15, 1931, and consisted
of a "gabbana" standing upright on a circular mat.

In August 1939 the respondent-defendant (called applicant in
the judgement) applied to register a trade mark consisting of a "zeer"
mounted on a three-legged metal stand surrounded by a frame,
containing certain inscriptions in Arabic. His application was duly
advertised in the Sudan Government Gazette No. 679 published 00
August 15, 1939.. Both the registered mark and that now sought to be
registered are for use in respect of cotton piece goods chiefly of a type
known as zarrag.

Subsequent to his original registration opponent varied his trade
mark to include a rectangular surround ornamented with Arabic let-
tering. Following publication of the mark proposed for registration
in 1939 opponent filed a notice of opposition to registration in the
High Court, Khartoum. Judge Sandes held that opponent had no
rights in the unregistered portions of his trade mark, and held as a
fact that the trade mark proposed for registration did not infringe the
trade mark registered by opponent in 1931.

1940. Bennett J.: This is an application for the revision of a
decree of the judge of the High Court, Khartoum, by which he dis-
missed an opposition by the opponent under section 10 of the Trade
Marks Ordinance 1930 to the registration of a trade mark which was
the subject of an application for registration under section 8 of the
Ordinance.

The grounds of the opposition as stated in the notice of opposi-
tion under section 10 (i) were that the trade mark sought to be
registered by the applicant was an imitation of a trade mark which is
the property of the opponent and registered by him in 1931.

At the hearing of the opposition before the learned judge of the
Hight Court it became apparent that one of the points if not the main
point of similarity between the mark used by the opponent and the
applicant's proposed new mark was a rectangular surround which,
although actually used by the opponent in conjunction with his reg-
istered mark, did not form any part thereof.

The learned judge, who had no help on the point from the
advocate for the opponent, was of opinion that there were no rights
in the unregistered portion of the opponent's mark, namely, the sur-
round, which would in any way assist the opponent in his opposition
under section 10, and he found as a fact that the applicant's mark
did not so clearly resemble the registered trade mark of the opponent,
shorn of its unregistered surround, as to be calculated to deceive
within the meaning of section 6 (9) of the Trade Marks Ordinance
1930, and so dismissed the opposition.

Section 6 of the Trade Marks Ordinance 1930 sets out a number
of matters which render a mark incapable of registration as a trade
mark, and everyone of these matters, if substantiated, would form a
proper ground of opposition to the registration of a trade mark under
section 10 of the Ordinance.

Subsection 4 of section 6 provides:

"Marks which are or may be injurious to public order or
morality or which are calculated to deceive the public or marks
which encourage unfair trade competition, or contain false indica-
tions of origin."

This subsection corresponds exactly with one of the subsections
of the corresponding section 11 of the English act, and it is clear that
under this section it is in England open to an opponent of the registra-
tion of a new trade mark to avail himself of a valid unregistered trade
mark.

The relevant passages in Kerly on Trade Marks (6th ed.) are
at pp. 205-6 as follows:

"Where any marks already in use are trade marks, whether
registered or unregistered, it is clear that they are obstacles to the
registration of any mark which so closely resembles them as to
be calculated to deceive, unless the applicant has an independent
trade mark right in the mark. he puts forward. This is expressly
enacted by section 19 in regard to - registered trade marks; ~nd
it fo11ows, in the case of unregistered trade marks, from the
prohibition placed by section ] 1 upon the registration of any
matter, the use of which, by reason of its being calculated to
deceive or otherwise, would be deemed disentitled to protection
in a Court of Justice. But. if the applicant's mark has by long
user become his trade mark, he cannot be prevented from reg-

istering his mark by the recent user of another person, nor is
he bound first to establish his right to restrain such user."

and at pp. 100-1 where the grounds of opposition to an application
for registration of a new trade mark are dealt with. It follows that
the learned judge misdirected himself in finding that the opponent
could have no rights in the unregistered portion of his mark which
avail him in his opposition to the registration of the applicant's mark.

It is clear that had the learned judge had his attention called to the
law on the subject he could in the state of the evidence before him have
framed a new issue on this point, and if he had been of opin~m that
some questions of resemblance calculated to deceive might then arise
he should have framed such an issue. I am of opinion that it is not
possible to say that no such question of resemblance could arise, and
I think therefore that the learned judge should have framed such an
issue.

The framing of issues is a burden imposed upon the court and
that burden remains throughout the trial of an action; see section 72
(3), Civil Justice Ordinance. The burden is not displaced either by
the presence of advocates or the delivery of pleadings. If therefore
during the course of a trial it appears that there are other matters
affecting the merits of the claim in question or the defence thereto
which should but have not been put in issue, it is the duty of the
court, upon such terms as may be just, to frame the issues thereon.

If it appears to this court that the court below should have
framed an additional issue, it is clearly the duty of this court to
interfere and put the matter right, and the applicant's counsel must,
I think, have been basing the indignation he expressed to the adoption
of this course upon a formal issue, right and proper in England, but
which does not and in the present stage of development, properly
does not exist in the Sudan. The applicant has been engaged in the
sale of these goods for some years and the postponement of the reg-
istration of his trade-mark if he be entitled to it cannot affect him
as seriously as the wrongful registration of the mark would affect the
opponent: It was suggested that the opponent should be left to his
remedy under section 17 of the Ordinance. In my opinion that course
would be undesirable. The applicant in these proceedings is petition-
ing and the burden of proof is upon him to establish beyond reasonable
doubt that his mark is not likely to be confused with any other reg-
istered or unregistered mark. It is most desirable in the nature of