TMI Blog1996 (7) TMI 553X X X X Extracts X X X X X X X X Extracts X X X X ..... mely, Vishnu Das Trading as Vishnudas Kishendas Zarda are manufacturing quiwam and 'zarda'since 1973 and the appellant has been using the same trade mark, namely, Charminar on his bottles and boxes of quiwam and zarda. The device of trade mark charminar in the city of Hyderabad as used by the appellant is, however, different from the device being used by the respondent No.1 Company. The appellant applied for registration of cuiwam and zarda with trade mark Charminar under the Trade and Merchandise Marks Act 1958 and the Trade Marks Rules, 1959 framed under the said Act. The respondent Company raised objections that the trade mark sought by the appellant would conflict with the registered Trade Nos. 9951 and 170427 which the respondent No.1 Company obtained in 1942 and 1955. The Joint Registrar of Trade Marks, however, observed inter alia in the minutes dated September 24, 1973 about the objections of the respondent to the effect that the mark would conflict with registered trade marks Nos. 9951 and 170427. It was also observed that although the applicant had contended that such registration of trade marks was in respect of cigarettes but quiwam and zarda were goods of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... was also held by the learned Single Bench of the Madras High Court that to sustain registration for an article manufactured tobacco' in Class 34, it was not necessary to establish user of the trade mark and rectification as ordered by the Assistant Registrar would enable the appellant to pass them as the goods manufactured by the respondent No.1 Company. Against the judgment and order passed by the learned Single Bench, the appellant preferred two statutory appeals under Section 109(5) of the said Trade and Merchandise Marks Act, 1958 (hereafter referred to as Trade Marks Act) before a Division Bench of the Madras High Court and by the impugned common judgment dated October 11, 1990, the Division Bench dismissed the said appeals thereby affirming the order passed by the learned Single Bench of Madras High Court. It was inter alia held by the Division Bench of the Madras High Court that there could be no separate registration in respect of cigarettes as Class 34 spoke only of manufactured tobacco and that ground alone was sufficient for setting aside the order of the Assistant Registrar. The Division Bench further held that the Joint Registrar had already passed an order un ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... es (usually aromatic) also applied to pan as another ingredient; gutka-it is again in fine flakes which is chewed sometimes with the addition of lime (chuna). c) tobacco consumed by inhalation- snuff which is in powder form and taken in or inhaled through the nose. iv) the word 'charminar' is distinct and specific in connotation. It is the name of a well known 18th century monument standing as a landmark in the city of Hyderabad. Its name and depiction in any form was not susceptible to any proprietary or pre-emotive claim by any one. v) Since 1973 the appellant has been manufacturing quiwam and zarda in respect of which the appellant sought trade marks under the brand name and device of 'charminar' on the bottle and boxes of the product of the appellant with an entirely different depiction as compared to that used by the respondent Company on its cigarette packets and cartoons. The appellant also holds a duly registered copyright under the Copyright Act. 1957 on the brand name and device of 'charminar' as depicted by the appellant. vi) When the appellant had applied for registration of the said trade mark under Class 34 in respect of quiwam a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... belonging to the genus manufactured tobacco , such trader or manufacturer cannot by obtaining a trade mark for its product in respect of the class in which it falls (in this case, manufactured Tabasco ) preclude the public at large or in any event, the trading and manufacturing community e.g. traders and manufacturers of quiwam and zarda or traders and manufacturers of snuff etc. from obtaining any trade mark in respect of their products simply because they fall under a broad class or a genus i.e. manufactured tobacco although the goods belong to different species and are essentially different in description as also in the mode of consumption. Mr. Ganesh has further submitted that exclusion of different species which may come under the heading of a genus comprising various specifics even when a trader or manufacturer having obtained registration under the heading of genus, in fact, is manufacturing only one of the species thereby pre-empting or excluding others to get registration in respect of different species other than the species which is being manufactured by the trader or manufacturer, will be unjust and unfair and against the principles by which registration of trade ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... no bonafide use of the trade mark in relation to those goods by him upto a date one month before the date of the application under Section 46 by the person aggrieved. Mr. Ganesh has submitted that this requirement is fully satisfied in the present case. ii) upto a date one month before the date of the application by the person aggrieved, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bonafide use thereof in relation to those goods by the registered trade mark holder. In such a case, the concerned Tribunal, (High Court or the Registrar), may impose on the registration of the existing trade mark such limitations as it thinks proper for securing that the existing registration shall cease to extend to such use. Mr. Ganesh has submitted that this requirement is also fully satisfied and the Assistant Registrar of trade marks has specifically ordered so. In this connection, Mr. Ganesh has submitted that the statutory burden lies on the registered trade mark holder to show that his said non-use was due to special circumstances in the trade and not to any intention to abandon or not to use the trade mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rade Marks Act. Mr. Ganesh has also submitted that intrinsic evidence in the Trade Marks Act and the 1959 rules leads inexorably and ineluctably to the following conclusions:- a) Trade mark means a mark used in relation to the goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some persons having the right to use the mark. Goods means anything which is the subject of trade or manufacture. A trade mark posits an integral connection between a specific article or thing forming the subject matter of trade/manufacture and its attribute as that of a particular trader/manufacturer. Obviously, anything which is the subject of trade or manufacture, must be an article or thing that is distinctly complete, identifiable and vendible but not something nebulous and lacking in specificity or precise identification. In this connection, the attention of this Court is drawn by Mr. Ganesh to the definition of Goods and the definition of Trade Mark in Sections 2(1) (g) and (v). b) the focus of trade marks and registration thereof is on concrete, specific, identifiable and vendible goods and not on a concept or appell ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to the extent of mandatorily constituting evidence in the proceeding. Mr. Ganesh has also submitted that the Trade Marks Act maintains a clear distinction between goods of the same description (occurring in Section 46 with grammatical variations in Sections 12 and 34) and class of goods with its grammatical variations in Section 18 and Rules 22 and 26 read with the fourth Schedule to the 1959 Rules. A given class occuring in the said Schedule may comprise a number of goods or articles or things each of which is separately identical and vendible and all of which are not goods of the same description as contradistinguished from goods falling within the same class. 'Manufactured tobacco is a class which covers widely varying goods of different description, character and mode of consumption. Mr. Ganesh has contended that Section 2 (1) (m) of the Trade Marks Act defines 'permitted use' in relation to a registered trade mark to mean inter alia the use of a trade mark by a registered user thereof in relation to goods with which the user is connected in the course of trade . Similarly, a mark i.e. a device, brand, heading, label, ticket, name, signature, word, letter or n ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (2) provides that an application for registration shall not be more in respect of goods comprised in more than one prescribed class of goods. Similarly, Section 24 which deals with jointly owned trade marks adverts to an article with which both or all of them are connected in the course of trade. Mr. Ganesh has further submitted that extrinsic aids to the interpretation and construction of the Trade Marks Act and the 1959 Rules framed thereunder also serve to sustain the submissions made by him. The extrinsic aid includes corresponding legislation in the United Kingdom, the legislative history of the Trade Marks Act of 1958 and 1959 Rules framed thereunder, the Report of the Trade Marks Enquiry Committee, 1954, the Report of Mr. Justice Rajagopala Ayyangar on Trade Marks Law Revision in 1955 and the statement of Objects and Reasons for the Bill which culminated in the Trade Marks Act. Mr. Ganesh has submitted that the decisions of Courts in India and also the authorities of persuasive value from foreign jurisdiction support the contentions made by him. Mr. Ganesh has submitted that the rationale of trade mark law with reference to the rectification of the Registrar is aptly an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s Court in the said decision that: From what we have said above, we must not be understood to mean that a person who does not intend to use a trade mark himself, can get it registered and when faced with a application under Clause (a) of Section 46 (1) to have that trade mark removed turn round and say that he intended to use it through some person who was proposed to be registered as registered user. This would clearly amount to trafficking in a trade mark. Mr. Ganesh has submitted that the registration in 1945 and 1993 made in favour of the respondent company under the broad classification manufactured tobacco although the Respondent Company is admittedly only manufacturing cigarettes and does not intend to manufacture any other goods and articles falling under the genus manufactured tobacco; has created a monopoly of trade mark over varieties of goods coming under the said broad classification thereby preventing the other traders and manufacturers like the appellant to get their distinctive articles which also fall under the general classification 'manufactured tobacco' to get registered in respect of such distinctive articles. In such circumstance, the rec ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eading of Section 8(1) and Rules 22 the 26 framed under the Trade Marks Act together with Schedule 4, support the contention of the respondent Company that apart from classification made in Schedule 4, no other classification is possible for the purpose of registration of trade mark. Mr. Vaidyanatha has submitted that there is no separate or independent item in the classification contained in the 4th Schedule for cigarettes. Cigarettes can only be brought under the entry 'manufactured tobacco under Clause 34 of Schedule 4, Mr. Vaidyanatha has submitted that in view of such legal position, the High Court has rightly held that the order of Registrar was liable to be set aside on that ground only. Mr. Vaidyanatha has also submitted that Section 8 of the Trade Marks Act is different from Section 5 of the previous Trade Marks Act of 1940. The legal incidence of the expression in Section 8 of the present Act, comprised in prescribed class of goods which does not find place in Section 5 of the previous Act or 1940 requires proper consideration. Mr. Vaidyanatha has submitted that legislative change by the aforesaid expression introduced in the present Act has been consciously made ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t the beginning of 1946, the defendants commenced to use the mark sunniwite on a spapless detergent poweder. The plaintiffs sued for infringement and the defendants counter claimed to rectify the Register by striking out goods other than soap, on the ground of non-user. The plaintiff's mark had been used on a large scale but on soap only. It has been held in the said deision that: a) the mark had been infringed, b) the specification of goods ought not to be amended to exclude detergents or supstances for laundry use, c) the cosmetic goods within the specification were not of the same description as soap and that subject to the general discretion of the Court, they might be liable to exclusion but that- d) the defendants were not persons aggrieved by the registration in respect of those goods and were not therefore entitled to claim their exclusion from the plaintiff's registration. Mr. Vaidyanatha has further submitted that the Madras High Court has rightly held with reference to Section 46 of the Trade Marks Act. in particular the proviso to the said Section that it was quite apparent that the applications for rectificaton were not maintainable. The concerned a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lation to the tobacco manufactured products and such right cannot be restricted only to cigarettes which is only one of the articles under the said heading 'manufactured tobacco'. Mr. Vaidyanatha has disputed the contention of Mr. Ganesh that cigarettes, quiwam and zarda are neither the same goods nor the same description of goods . Mr. Vaidyanatha has submitted that the Madras High Court has rightly observed that all the goods are of the same description, namely, 'manufactured tobacco'. Mr. Vaidyanatha has also submitted that common trade channels through which the product of a trader or manufacturer is marketed is an important consideration in deciding whether the goods are of the same or different description. Mr. Vaidyanatha has further submitted that it is not denied by the appellant that cigarettes, quiwam and zarda are all marketed through the same trade channel. In support of such contention, Mr. Vaidayanatha has referred to a decision of this Court in Corn Products Refining Co. Vs. Shargrila Food Products Ltd. (AIR 1960 SC 142). It has been observed in the said decision that: an average purchaser would, therefore, be likely to think that the respo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er submitted that when there is registration of trade mark for 'manufactured tobacco in Class 34 but its use is confined to cigarettes, another manufacturer of smoking tobacco, cigars, snuff, or chewing tobacco or any form of manufactured tobacco which are all made of tobacco, cannot use the registered trade mark so as to create confusion or deception in the mind of the purchaser that the goods sold under the trade mark had been produced by the cigarette manufacturer. In support of this contention, Mr. Vaidyanatha has referred to a decision of the Privy Council in Somerville Vs. Sehembri (1887 (2) AC 453). He has submitted that the view taken in the said decision was followed in the decision of various High Courts, namely Calcutta High Court in Rustom Ali Vs. Bata Shoe Company (AIR 1957 Cal. 120), Bombay High Court in Sunder Vs. Caltex (AIR 1969 Bombay 24), Delhi High Court in Nestle Products Vs. Milkmaid Corporation (AIR 1974 Delhi 40). Mr. Vaidyanatha has submitted that the learned Single Judge of the Madras High Court has referred to the decisions mentioned above and has rightly held that having obtained registration in respect of the tobacco products under the heading &# ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r in these appeals and the same should be dismissed. Mr. Jayaram, the learned Additional Solicitor General appearing for the respondent No. 2, namely the Assistant Registrar of Trade Marks, has submitted that Section 8 of the Trade Marks Act provides for registration in respect of any or many or all items within a class. He has submitted that within a class there may be various goods. Mr. Jayaram has drawn the attention of the Court to sub-rule (2) of Rule 26 of the Trade Mark Rules. He has submitted that Rule 26 envisages that an application for registration would be in respect of only class of goods as mentioned in 4th Schedule. If a manufacturer or trader intends to get registration of a number of goods which appertain to different classes a mentioned in Schedule 4, separate applications are to be made relating to goods coming under each of the separate classes. Sub-rule (2) of Rule 26 indicates that in the case of application for registration in respect of goods included in a class or of a large variety of goods in a class, the Registrar may refuse to accept an application unless he is satisfied that the specification is justified by the use of the mark which the applicant h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... es have been manufactured from tabacco but each of the articles is distinctly different and is differently used. Initially, when the respondent Company got registration of the trade mark charminar not in respect of any specific article under the genus, 'manufactured tobacco', the Company by virtue of registration in a wide enjoyed the right of the use of trade mark in respect of various goods coming under the said braod heading 'manufactured tobacco'. It has however been demohstrated that ever since 1942-43, the respondent Company had manufactured only cigarettes and had not intended to manufacture or trade in other distinct articles coming under the broad heading 'manufactured tobacco'. Mr. Jayaram has submitted that there is no question of passing off quiwam or zarda for cigarette being manufactured by the respondent Company even if the same brand name charminar is given to quiwam and zarda produced by the appellant. Referring to Section 8 of the Trade Marks Act, Mr. Jayaram has submitted that it is permissible to register any of the goods which may fall under a prescribed class of goods. Hence, only cigarettes may be registered under the broad classif ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to the facts and circumstances of the case and submissions made by the learned counsel for the parties, it appears to us that the avowed object of the Trade Marks Act as indicated in the Statement of Objects and Reasons is to enlarge the field of registrability . In these apeals, the propriety and validity of the order of rectification are only germane. It is not necessary to address on the questions relating to infringement of trade mark or passing off or defensive registration because such questions do not arise for decisions. There is no dispute that the respondent No.1 Company has been manufacturing cigarettes under the brand name charminar since 1943. In 1942 and 1955, the said Company got registration of the said brand name charminar for the goods being classified as manufactured tobacco in class 34 of 4th Schedule in the Rules framed under Trade Marks Act. It is also not disputed that the expression charminar is not an inventive word which is the condition precedent for defensive registration under Section 47 of the Trade Marks Act (Section 38 of the Trade Marks Act of 1940). No evidence has been led by the respondent Company that the respondent Company had really int ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ation made in favour of the respondent Company so that the said registration is limited only in respect of the articles being manufactured and marketed by the respondent Company, namely, cigarettes. In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. If same or similar and covered by earlier registration and ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It may be noted that under sub-section (3) of Section 12 of Trade Act. in an appropriate case of honest concurrent use and/or of other special circumstances, same and deceptively similar trade marks ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ied. It has already been indicated that the controversy in the instant appeals, is only confined to the propriety and validity of the order of rectification of the registration of trade mark made in favour of Respondent Company and it is not necessary to address on the questions of infringement of trade marks, passing off, defensive registration etc. In that view of the matter, various decisions cited at the bar dealing with the likely prejudice to be suffered by a trader or manufacturer enjoying registration of trade mark in the event, similar or deceptively similar trade mark is allowed to other trader or manufacturer in respect of similar goods or goods marketed through common trade channel need not be taken into consideration for the disposal of these appeals. As in the facts and circumstances of the case, the rectification of the trade marks registered in favour of the respondent Company since allowed by the Assistant Registrar of Trade Marks was valid and also justified, such order in our view, should not have been interfered with in appeal. We, therefore, allow these appeals, set aside the impugned judgments of the High Court and restore the order of rectification passed ..... X X X X Extracts X X X X X X X X Extracts X X X X
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