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TMI Blog1954 (4) TMI 62X X X X Extracts X X X X X X X X Extracts X X X X ..... garded as prima facie distinctive by the Act itself? 3. Whether, even if the word "Rasoi", when used as a trade mark for the appellant's oil, can be said to have no direct reference to the character or the quality of the goods and even if its distinctiveless were to be taken as established, must the word be held to be still ineligible for registration, in view of the fact that it is a common word of the language of which no monopoly should be granted to any particular trader? 2. By a determination made by the learned Chief Justice on 4-2-1954 the case has been placed before me. 3. I shall now proceed to deal with the above points in the order stated above. 4. The facts of this case have been fully" set out, if I may say so with respect, in the judgment of My Lord the Chief Justice and need not be restated. 5. I shall take the first point first. 6. In order to answer the questions it is necessary to refer to the definition of the word 'Mark' and 'Trade Mark'. The word 'Mark' is defined in Section 2(1)(f) as including among other things a 'word'. The word 'Trade Mark' is defined in Section 2(1)(e). Compendiously stated ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Rasoi" may be taken to mean 'cooking'. The requirement of Section 6(1)(d) of the Act is that the word "Rasoi" should have no direct reference to the character or quality of the goods. The word "character" has been defined in Murray's New English Dictionary, Vol. II, Part I, to mean a feature, trait, characteristic and the word "characteristic" has been defined to mean a distinctive mark, trait, or feature, a distinguishing or essential peculiarity or quality. It is admitted that the normal use of hydrogenated ground-nut oil is for cooking purposes. The use of the commodity as intended or adapted, undoubtedly forms part of its character. 'Philippart v. William Whiteley Ltd.', (1908) 2 Ch 274 at p. 283 (A). To people in the trade and to the consumers, the word "Rasoi" would thus imply a direct reference to the character of the goods. Mr. Das, learned Counsel for the appellants contended that the word 'character' or 'quality merely denotes something material to the composition of the goods. Reference was made to certain observations of Vaughan-Williams, L.J., -- "In the matter of Burroughs Wellcome & C ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ater Act which provided the remedy. The corresponding provision in English Act of 1938 is contained in Section 9, Clause (d) which merely reproduced Section 9(4), Trade Marks Act, 1905. In the Trade Marks Act of 1888 which preceded the Act of 1905, the corresponding provision was contained in Section 6(4)(e) which reads as follows : "A word or words having no reference to the character or quality of the goods, and not being a geographical name.........". It thus appears that the word 'direct' was introduced; by the Act of 1905. The reason for this addition was to give effect to the view taken by the House of Lords in the case of -- 'Eastman Photographic Materials Co.'s Application', (1898) AC 571 (C), known as the 'Solio Case' that simply because the word 'Solio' suggested the sun, it could not be said that the word 'solio' had some reference to the character of the photographic paper known as 'solio'. It is true that the introduction of the word 'direct' shows that the mere fact that the word 'mark' has some reference to the goods does not render it incapable of registration. The Reference must be a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... uggest lubricating oil which was not exclusively used on motors but was used for various other purposes as well. The "Radiation' case (E)', was a decision of the Comptroller General. The word Radiation was used in respect of gas stoves. The word 'Radiation' was not descriptive of gas stoves and as such was capable of becoming distinctive by long user. In Kerry on Trade Marks, 7th Edn. p. 184, the 'Radiation' case (E) is said to be a border line case and not one which is likely to be repeated. In the ''Sheen' case (F)', the word 'Sheen' was proposed for registration as a mark in respect of machine twist or mercerised sewing thread. The Registrar refused registration. On appeal the decision was affirmed by Luxmore J. The judgment of Luxmore J., was affirmed by the Court of Appeal. On a further appeal by the Registrar, Lord Wright observed that the word 'Sheen' had become distinctive of the applicant's goods, that the word 'Sheen' is not a laudatory word like 'perfection' 'best artistic' and that in the sewing cotton trade the attribute of glossiness which the word 'Sheen' was intended to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 'In Re Cassella & Co.', (1910). 2 Ch 240 (I), known as the "Diamine" case registration was applied for in respect of the word "Diamine" on the ground that the applicants have been using the word as a trade mark for their dyes for about 20 years. The application was rejected on the ground that the word "Diamine" was a known chemical term which indicated that the word contained two amine groups, ft was held that this fact was sufficient to indicate that registration was applied in respect of goods which contained two amine groups and that the word was descriptive of the character and quality of the goods. In the case of -- 'Keystone Knitting Milis Ltd.', (1928) 45 RPC 421 (J), known as the "Charm" caser the word "Charm" was held to have direct reference to the character and quality of the goods when used in respect of ladies stockings. The case of--'In re R J. Lea Ltd.', (1913) 1 Ch 443 (K), related to registration of the word "Boardmans" in respect of manufactured tobacco. The word "Boardmans" was surname of an individual. The application was rejected by Joyce J. on the ground that a mere ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , it has." 16. Reference to cases is not of much help in finding out whether or not a particular word has direct reference to the character and quality of goods unless the decision lays down a principle of conduction. The cases merely indicate the length to which the Courts have gone in construing the expression "direct reference to the character and quality of the goods.'' 17. My conclusion therefore is that the word "Rasoi" has direct reference to the character and quality of the goods and is not eligible for registration. The answer to question No. 1 is therefore in the affirmative. 18. I shall now take up the second question. The second question involves an equiry as to whether the requirement of distinctiveness attaches to each one of the clauses in Section 6(1) including Section 6(1)(d). Section 6(1)(e) provides that a trade mark shall not be registered unless it contains or consists of "any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the descriptions in the above clauses, shall not be registrable except upon evidence of its distinctive-ness" Section 6(1)(a), (b), (c), (d), (e), ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n to which I have already referred." 19. The above observations clearly support the view that distinctiveness must be proved to exist in respect of the Clauses (a) to (e) of Section 6(1). It does not appear as S.R. Das Gupta J. thought that Lawrence L.J. pointed out that the above question which was answered in affirmative by Lord Hanworth, did not arise in that case. Reference to the judgment of Lawrence L.J. at p. 333 would indicate that he merely reserved his opinion on this question. The same view as to the effect of Section 9(5) corresponding to Section 6(1)(e) was taken in (1937) 54 RPC 161 at p. 179 (G). In Kerly on Trade Marks ....... at page 105, it is stated that "Although the paragraphs of Section 9(1) are to be considered, as independent, in each case the mark proposed to be registered must not only fall within the terms of at least one paragraph, but must also be distinctive." The cases above cited have been followed by a Bench of this Court Harries C.J., and Chatterjee J. in their decision in -- 'B.C.L. Ltd. v. Bangodaya Cotton Mills Ltd.', Appeal No. 66 of 1947, D/- 23-6-1949 (Cal) (O). It was laid down that no trade mark can be validly reg ..... X X X X Extracts X X X X X X X X Extracts X X X X
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