Trading As Vishnudas Vs. The Vazir Sultan Tobacco Co. Ltd. Hyderabad & Anr
 INSC 773 (9 July
G.N. (J) Ray, G.N. (J) G.B. Pattanaik (J) G.N. Ray, J.
JT 1996 (6) 366 1996 SCALE (5)267
learned counsel for the parties.
appeals are directed against the common judgment dated October 11, 1990 passed by the Division Bench of
Madras High Court in Trade Mark Second Appeal Nos.1 and 2 of 1981 arising out
of the judgment dated September
11, 1980 passed by a
Single Bench of Madras High Court in AAO Nos.582-83 of 1978. The respondent
No.1 Company, namely, the Vazir Sultan Tobacco Co. Ltd. Hyderabad, has been
manufacturing cigarrettes under the brand name "Charminar".
said Company in 1942 and in 1955, under the then Trade Mark legislation
obtained registration of Trade Mark in respect of "manufactured
tobacco" falling in Class 34 of the 4th Schedule to the rules framed under
the Trade Marks Act 1940 and 1950 Act. The respondent No.1 Company, however,
did not manufacture anything other than cigarettes during all these long years.
The appellant, namely, 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.
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 different specifications and such goods would not cause any
conflict with the goods being manufactured by the respondent No.1 Company,
since the registration was of the trade mark made in favour of the respondent
to respect of 'manufactured tobacco' which in its ambit would also take quiwam
and zarda, the objection of the respondent No.1 Company under Section 12(1) of
the Trade Marks Acts, therefore, could not be waived. It was noted in the
minute that the counsel for the applicant i.e. the appellant herein, had
offered to apply for rectification of the said trade mark in favour of the
respondent No.1 Company.
on October 15, 1973, the appellant filed two
applications under Section 46 read with Section 56 of the Trade and Mechandise
Marks Act. 1958 before the Registrar of Trade Marks, Madras for rectifying the
registration of existing trade mark held by the respondent No.1 Company mainly
on the ground of non user of the same in respect of quiwam and zarda by the
respondent No.1 Company.
proceedings before the Registrar of Trade Marks continued from 1973-76 but the
respondent No.1 Company though contested the said applications could not
dispute or refute the allegation of the appellant that the respondent No.1
Company had never manufactured any other article of tobacco except the
cigarettes. The said applications made by the appellant were ultimately
disposed of by the Assistant Registrar, Trade Marks, Madras on August 31, 1976 by allowing the applications for rectification. The
Assistant Registrar Trade Marks ordered that the Registrar, Trade Mark, bearing
Nos. 9951 and 170427 would be rectified by making the entries relating to
specification of goods to read as 'cigarettes'.
No.1 Company thereafter preferred two statutory appeals under Section 109(2) of
the Trade and Merchandise Marks Act before a learned Single Bench of Madras
High Court. By a common judgment dated September 11, 1980, the learned Single
Judge allowed the said appeals preferred by the respondent No.1 and set aside
the order of the Assistant Registrar, Trade Marks, dated August 31, 1976.
learned Single Judge, in his order allowing the said appeals, had observed that
the Assistant Registrar of Trade Marks had made a sub-classification of 'manufactured
tobacco' occurring in Class 34 although sub-classification could not be made.
It 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.
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 under Section
12 of the Trade Marks Act, 1958 declining registration of trade marks as sought
by the appellant and in the abscence of rectification of the trade marks in the
register in favour of the Respondent No.1 Company, the said registration was
conclusive of the matter ad the rectification applications were not
maintainable. The Division Bench also held that manufacture of cigarettes would
come under 'manufactured tobacco'. Hence, the respondent No.1 Company's trade
mark could not be removed or restricted on the ground of non-use with reference
to goods of different specifications such as quiwam and zarda falling under the
class 'manufactured tobacco' even if quiwam and zarda had never been
manufactured or were intended to be manufactured by the respondent No.1
Company. As aforesaid, the said decision of the Division Bench of Madras High
Court is under challenge in these appeals.
respondent Company is and always has been solely manufacturing cigarettes under
the brand name of 'charminar' ever since 1942 and 1955. The said Company
obtained registration of Trade Marks for manufacturing tobacco in relation to
the cigarrettes bearing the said brand name falling under Class 34 of the 4th
Schedule of the Trade Mark Rules framed under the Trade Marks Act 1940. The
Schedule in Trade Marks Rules 1942 continues verbatim as the 4th Schedule of
Trade Mark Rules framed under the Trade Marks Act. The Trade Mark 'charminar'
is not defensive registration. The word 'charminar' is not an invented word
which is the condition precedent for a defensive registration under Section 38
of the 1940 Act corresponding to Section 48 of the subsequent Trade Marks Act.
respondent Company never intended to nor evinced any intention to nor even
intends to manufacture anything other than cigarettes.
Class 34 reads thus "34 tobacco raw or manufactured, smokers' articles, matches."
"manufactured tobacco" covers a large range and variety of goods and
articles which in terms of their different descriptions as well as different
modes of consumption, may be broadly categorised as:
tobacco consumed by smoking, cigarattes, cigars cheroot, bidis, pipe tobacco b)
tobacco consumed by chewing and ingestion quiwam which is the paste form and
applied as an ingredient to pan, zarda which is in the form of fine flakes
(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).
consumed by inhalation- snuff which is in powder form and taken in or inhaled
through the nose.
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.
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.
When the appellant had applied for registration of the said trade mark under
Class 34 in respect of quiwam and zarda, the trade mark Registry declined to
grant the same on account of the respondent Company's said registered trade
mark in relation to the cigarettes for which the appellant was constrained to
get the register rectified in relation to the respondent Company's trade mark.
the proceedings under Section 46 read with Section 56 of the Trade Marks Act
had to be initiated by the appellant.
has contended that "manufactured tobacco" is a genus of which those
consumed variously i.e. by chewing, inhaling or by smoking are species. Each of
these species constitutes articles of different description from the others and
each is distinct in character and use, though all of them fall within the same
broad Class i.e. "manufactured tobacco".
has contended that the trade mark is or can be granted in respect of a Class of
goods which is nebulous and lacks in any specificity and precise identification
such as "manufactured tobacco", without any reference to the
particular goods or articles or thing falling in the class which is traded in
or manufactured and in respect of which the applicant trader or manufacturer
seeks a trade mark.
the registration of Trade Mark in favour of Respondent No.1 in 1942 and 1955 as
"manufactured tobacco" was fundamentally erroneous and consequential
erroneous entry in the Trade Mark Register is liable to be appropriately
rectified. By such rectification, limiting the respondent Company's trade marks
to cigarettes, no prejudice will be caused to the respondent Company, whereas
if such rectification is not carried out, the appellant si irreparably
prejudiced and is precluded for all time from getting the trade marks for his
goods, quiwam and zarda registered. Such prejudice is equally occasioned to the
rest of the trading and manufacturing community in relation to any species of
"manufactured tobacco" other than cigarettes.
has submitted that such prejudice, preemption and exclusion in rem can not be
permitted by a trade mark registration.
has also submitted that on a true interpretation and proper construction of
Trade Marks Act and Trade Marks Rules 1959, where (as in this case) a trader or
manufacturer actually trades in or manufactures solely one article namely
cigarettes and evinces no bonafide whatever to trade in or manufacture any
other goods or articles 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.
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
mark is made. This proposition would be particularly valid where
the registration of the registered trade mark is not a defensive registration
and the brand name of the goods under registration is not an "invented
word" and the device, logo or symbol associated with that name and
depicting the product is not an invented one and
even though the registered trade mark holder obtained the registration for the
entire class in which his product falls, but he has neither any bonafide
intention to use nor made any bonafide use of the registered trade mark in
relation to any other goods falling within that class, whether within the
stipulated statutory periods or beyond them, governing rectification of the
Register and imposition of limitations on the ground of non-use concerning
registered trade marks.
has further submitted that a contrary approach to the interpratation and construcation
of the Trade Marks Act and the rules framed thereunder will go against the very
object and spirit of and principles underlying the trade mark law. According to
Mr. Ganesh, the aforesaid propositions and the principles they adumbrate apply
a fortiori to a case such as the present one. Mr. Ganesh has contended that a
registered trade mark holder cannot, in law, claim exclusive monopoly rights
over its trade mark as extending to goods of all descriptions falling within
the same class in which its sole and solitary product fails. The registration
in favour of the respondent Company cannot be held to interpose or sustain
objection to the rectification of its registered trade mark or imposition of
limitations thereon with reference to the goods or articles of entirely
different description, character and mode of consumption in relation to which
it had, at the time of obtaining the registration, no bonafide intention to use
its trade mark and which goods and articles, it has never manufactured or
intends to manufacture in fact. Mr. Ganesh has contended that the registration
of trade mark can appertain only to specific goods and not to a generic class.
to Sections 46 and 56 of the Trade Marks Act. Mr. Ganesh has submitted that the
statute contains the following postulates:
existing trade mark was registered without any bonafide intention on the part
of the applicant that it should be used in relation to those goods by him and
there has in fact been no bonafide use of the trade mark in relation to those
goods by him up to 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.
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.
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 mark in relation to the goods to which the application of the
aggrieved person relates. It has been contended by Mr. Ganesh that the
respondent Company has not pleaded that under any special circumstance the
Company did not use other items of the goods falling under the class in which
the respondent Company got registration. The respondent Company has not
discharged the burden arising from non-use of different items coming under the
broad classification 'manufactured tobacco'. Mr. Ganesh has also submitted that
if either of the above mentioned ingredients is satisfied, then allowing of an
application by the person aggrieved for the rectification will be matter of
course and refusal of such application for any valid reason will be an
exception. Mr. Ganesh has submitted that when the concerned authorities satisfy
that rectification of the registered trade mark is warranted an the facts and
circumstances of the case, such authority may make such order for making,
expunging or varying entries in the register as it may think fit for one or
more of the following reasons:
entry made in the Register without sufficient cause
absence or omission from the Register of any entry
error or defect in an entry in the Register It has also been contended by Mr. Ganesh
that it is consistent with the scheme and provisions of the Trade Marks Act and
the framed there under that no registration of trade mark is absolute,
perpetual and invariable. Thus, under Section 12 which deals with prohibition
of registration of identical or deceptively similar trade marks, in case of
honest concurrent use or of other special circumstances which in the opinion of
the Registrar make it proper so to do, he may permit the registration by more
than one proprietor of trade marks which are identical or nearly resemble each
other whether or not any such trade mark is already registered in respect of
the same goods or description of goods subject to such conditions and
limitations as the Registrar may think fit to impose. Mr. Ganesh has submitted
that this statutory scheme pervades other provisions of the Act as well
including in particular those that relate to the institution of
applications/proceedings for any purposes governed by the Act. In this
connection, Mr. Ganesh has drawn attention of the Court to Sections
16,17,18,21,46,47,56,69, and 112 of the Trade Marks Act.
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).
focus of trade marks and registration thereof is on concrete, specific,
identifiable and vendible goods and not on a concept or appellation of a class
or a genus of goods. In this connection, the Court's attention was drawn by Mr.
Ganesh to the definitions relating to "certification trade mark,"
false trade description", "trade marks" appearing in Section 2,
sub-section (1) Clauses (c), (f),(g),(i),(m),(u) & (v) and Section 2,
sub-section (2) Clause (b).
has contended that a trade mark can appertain only to specific goods and not to
a generic class.
trade mark is or can granted in respect of a class of goods, such as
"manufactured tobacco" without any reference to particular goods or
articles or thing falling in that class which is traded in or manufactured and
in respect of which the applicant trader or manufacturer seeks the trade mark.
Mr. Ganesh has contended that the classification of goods and names of the
classes as set out in the fourth Schedule to the 1959 Rules framed under the
Trade Marks Act under Section 133 read with Section 22 of the General Clauses
Act, 1897 is purely for the purposes of enabling the Trade Marks Registry to
ascertain in which class, specified goods or a particular article or thing
falls before granting and registering any trade mark in respect thereof.
has further submitted that Section 112 of the Trade Marks Act gives express
recognition and weight to the practice of the Trade Marks Registry. According
to Mr. Ganesh, appreciable significance and interpretative value are attached
to the index maintained and used by time honoured practice by the Trade Marks
Registry. The index is an amplification in alphabetical order of the
classification of goods, names of the classes set out in the fourth Schedule of
the 1959 Rules framed under the Trade Marks Act.
said Index is based on and derived from "The International Classification
of Goods and Services to which Trade Marks Act Applied," published by the
World Intellectual Property Organisation (WIPO) which was established by a
Convention at Stockholm on July 14, 1967.
has stated that India is a member country of that Organisation
and a signatory to that convention. The amplification and refinement of a
statutory classification for practical utility and efficacy based on an
internationally accepted and time honoured classification and practice,
deserves to be given due weight especially when such practice is given express
statutory recognition and sanctity even to the extent of mandatorily constituting
evidence in the proceeding.
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 numeral or any combination thereof can
be placed or used upon specific goods only and not upon something that is a
concept or appellation, for example, manufactured tobacco. Mr. Ganesh has
submitted that Section 2 (2) (b) of the Trade Marks Act provides that in the
Trade Marks Act any reference to the use of a mark in relation to goods shall
be construed as a reference to the use of the mark upon or in any physical or
in any other relation whatsoever to such goods.
to Section 8 of the Trade Marks Act, Mr. Ganesh has submitted that Section 8
contemplates that registration can only be in respect of particular goods and
that there is a distinction between "goods" and "a prescribed
class of goods" in which they may be comprised.
also postulates that the attribution of particular goods to their proper class
for purposes of registration of trade mark is to be determined by the Registrar
whose decision in the matter shall be final. Mr. Ganesh has also submitted that
Section 9 of the Trade Marks Act deals with requisites for registration in the
Trade Marks Register. Sub-section (4) highlights the point that if it not
distinctive, a trade mark shall not be registered in part B of the Register
unless such trade mark is capable of distinguishing goods with which the
proprietor of a trade mark is or may be connected in the course of trade from
goods in the case of which no such connection subsists, generally.
has submitted that Section 12(3) of the Trade Marks Act provides that in case
of honest concurrent use or of other special circumstances which in the opinion
of the Registrar, make it proper so to do, the Registrar of trade marks which
are identical or nearly resemble each other in respect of the same goods or
description of goods subject to such conditions and limitations, if any, as the
Registrar may think fit to impose. Section 45(2) also provides that the High
Court or the Registrar may impose on the registration of an existing trade mark
such limitations as the Tribunal thinks proper for securing that registration
shall cease to extend to use of the registered trade mark to the extent of its
actual non- use.
has submitted that at the very stage of application for registration of a trade
mark, the Trade Marks Act recognises the distinction between specific goods and
the class of goods in which they way fall. Section 18(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.
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 and Dennis (1885) 30 Ch.
Div. 454 at 474). Lord Justice Cotton (Lindley and Fry, L.J.J. concurring) has
observed to the following effect:- ".... The registration in the present
case has been for the entirety of that class. In my poinion that is wrong. Even
if a trade mark can be registered which is not in actual use. it ought to be
restricted to those goods in connection with which it is going to be used. In
my opinion, it is not the intention of the Act that a man registering a trade
mark for the entire class and yet only using it for one article in that class,
can claim for himself the exclusive right to use it for every article in the
class..... can a man claim registration for all the article specified in the
class when the business he is engaged in, comprises only one specific portion
of the article named in the class? I am of the opinion he cannot......
I am of the opinion that the Register ought to be rectified........
In my opinion, if a man wishes to extend his business to a new description of
goods and to use his trade mark in connection with the goods, he ought to
register it in respect of those goods. All we have how to do is to construe
this Act of Parliament; and it appears to me that it would be a wrong
interpretation of the Act, to hold that, when registration is general for an
entire class, it can be maintained for that class by a man who is assignee of a
business in only one particular description of goods in the class".
has submitted that both the learned Single Judge and the Division Bench of the
Madras High Court in the impugned Judgment erred in interfering in appeal with
the properly exercised discretion of the Registrar to limit the respondent
Company's registered trade mark to cigarettes and to rectify the Register
accordingly. In this connection, Mr. Ganesh has referred to the decision of
this Court in page 86 E-F). This Court has observed that under Section 56, the
power to rectify is undoubtedly discretionary. Where such discretion has been
properly exercised, a Court of Appeal would refuse to interfere. Mr. Ganesh has
also referred to the decision in American Home Products SCR 264). It has been
held by this Court in the said decision that:
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
rectification allowed by the Assistant Registrar was only just and proper and
no interference was called for by the High Court against such order of
rectification. Mr. Ganesh, therefore, submits that the appeal should be allowed
by setting aside the impugned decision of the High Court and by restoring the
order of rectification passed by the Assistant Registrar of Trade Marks in favour
of the appellant.
C.S. Vaidyanatha, learned counsel appearing for the respondent No.1, however,
disputes the contentions made by Mr. Ganesh. Mr. Vaidyanatha has submitted that
the question involved in these appeals are not confined only to the ambit of
Sections 46 and 56 of the Trade Marks Act and Rules 94 to 97 of the Rules
to Mr. Vaidyanatha in the proceedings concerning the appeals, question of
infringement of trade mark by the appellant is also involved. He has submitted
that the appellant has been using trade mark- 'charminar' since 1973, despite
being aware of the respondent Company's objection to the use of such trade
mark, as amounting to infringement of the trade mark of the respondent Company.
The Madras High Court has categorically held that the respondent Company got
registration in Class 34 and such registration is for manufactured tobacco'.
The respondent Company, therefore, has exclusive right to use the trade mark 'charminar'
for all goods falling under 'manufactured tobacco'. As the Assistant Registrar
of Trade Marks had erroneously restricted the respondent Company's registration
only to cigarettes, both the Single Bench and Division Bench of the Madras High
Court have rightly set aside such erroneous order.
has also submitted that the respondent Company had not filed the appeal before
the Madras High Court solely for the purpose of deciding the questions of law
and procedure regarding the power of the Registrar of Trade Marks to solit
classes in terms of Sections 46 and 56.
respondent Company preferred the appeals before the High Court to restore
registration made in its favour and to ensure removal of the restrictions which
had been improperly and unjustly imposed by the Assistant Registrar of Trade
Mark by confining the registration only in respect of cigarettes.
has also submitted that the Madras High Court has rightly indicated that a
conjoint reading 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.
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 by the legislature for a purpose. Mr. Vaidyanatha has
submitted that the Statement of Object and Reasons as contained in the Trade
Marks Act, 1958 clearly indicates that the new Act was introduced to enlarge
the field of registrability and to avoid the difficulties which were being
exercised by the Indian merchants in securing registration of trade marks in foreign
countries where the production of certificate of home registration was a
condition precedent for obtaining foreign registration. Mr. Vaidyanatha has
submitted that the present Trade Marks Act was enacted not any to prevent
confusion and deception but also to provide effective protection to Trade
marks. To buttress this argument, Mr.Vaidyanatha has also drawn the attention
of the Court to the debates in the floor of the Parliament (Lok Sabha) when the
Bill to amend the Trade and Mechandise Marks Act, 1940 was introduced.
has further submitted that a reference to Trade Marks Act 1940,and similar
Sections of the English Trade Marks Act of 1938, 1905 and 1875 will show that
under the 1940 Act and also under the said English Trade Mark Acts, it could be
registered only in respect of particular goods or Classes of goods. The
omission of the expression "particular goods" and inclusion of
"prescribed class of goods" in the 1958 Trade Act is significant and
such change has bearing on the true construction of Section 8 of the Trade
Marks Act. Mr. Vaidyanatha has submitted that under the present Trade Marks Act,
registration can be only in the nomenclature, phraseology and terminolgoy used
in the classification, prescribed under the rules.
has also submitted that the decision of applicable for considering the effect
registration of trade mark in respect of specified class of goods under the
present Act in view of the express language used in Section 8 of the present
Act. the Madras High Court has also indicated the import of such expression in
Section 8 of the Trade Marks Act.
has referred to another decision of Sunniwite Products Ltd. (LXVI RPC 84). In
the said decision, the plaintiffs were proprietors of the mark "sunlight"
registered in 1884 in Class 3 in respect of soap, substances for laundry use. detergents,
and certain cosmetic goods. At 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:
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.
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 authorities had already come to a finding
that cigarettes, Quiwam and zarda- all would come under the same description of
goods, namely, 'manufactured tobacco'. Accordingly, the cigarettes having
already been registered under the head of 'manufactured tobacco' at the
instance of the respondent Company, the rectification applications for
restricting the said trade mark only for cigarettes were not maintainable so as
to enable the appellant to register the same trade mark for manufacture of quiwam
and zarda even though the said articles fall under the same description of
goods. Mr. Vaidyanatha has also submitted that the respondent company alone is
entitled to use "charminar" trade mark with respect to the
'manufactured tobacco' products in Class 34.
there was no question of proving that the respondent Company and utilised or
had intended to utilise its trade mark for quiwam and zarda.
has also contended that the trade mark "charminar" had been
registered in favour of the respondent Company under the general heading
'manufactured tabacco' referred to in Class 34 of the 4th Schedule.
Accordingly, the respondent Company, namely, the registered proprietor cannot
be compelled to produce or trade in all the goods falling under that category
on the pain of losing his trade mark for non-use. So long, a separate
classification has not been made in respect of different classes of goods
falling under the general heading 'manufactured tobacco', the registration of
the respondent Company' s trade mark in respect of 'manufactured tobacco cannot
be held to be bad or invalid. Mr. Vaidyanatha has also submitted that the
appellant has been manufacturing quiwam and zarda only after it had filed
application for registration which was initially objected to by the Registrar.
It is, therefore, quite evident that on the date of making the application for
registration by the appellant, the mark was only proposed to be must but the
appellant went ahead and started using the marks in relation to quiwam even
though the respondent Company had objected to such use as being an infringement
of its registered trade mark in Class 34.
to Mr. Vaidyanatha, the respondent Company by virtue of its extensive use and brior
registration since 1942, is entitled to use the said trade mark 'charminar' in
relation 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'.
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
support of such contention, Mr. Vaidayanatha has referred to a decision of this
Court in Corn Products 142). It has been observed in the said decision that:
average purchaser would, therefore, be likely to think that the respondent's 'Glucovita
biscuits' were made with the appellants 'Glucovita' glucose.
was the king of trade connection between different goods which in the
"Black Magic" case (In re: as application by Edward Hact) 1940-58 RPC
91 was taken into consideration in arriving at the conclusion that there was a
likelihood of confusion or deception. The goods in this case were chocolates
and laxatives and it was proved that laxatives were often made with chocolate
coatings...." Similarly, in the case reported in AIR 1983 Punjab and Haryana 418, the High Court of
Punjab and Haryana has held that the goods are being marketed through the
common trade channel by observing that:
respondent have never manufactured watchesor clocks but they have been
manufacturing clock- work-timers used in photography and the radio clocks. The
watches and clocks are being sold on the same counter along with radio,
transistor and other electrical appliances even by the defendants...." Mr.
Vaiydanatha has submitted that similar view has also been taken by the Delhi
High Court in the case reported in AIR 1986 Delhi 329. It has been observed in the said decision that:
there is little doubt that the trade mark Goodmans has been used by the
plaintiffs from long, for their medicines. They being the prior user, have the
right to seek its protection. The defendant manufactured disinfectants under
the same mark i.e. 'Goodmans', considering the nature of the goods manufectured
by the parties, the trade channels through which they are marketed and the file
of activity that they have, they can be termed as cognate goods. The likelihood
of deception or confusion that the goods of the defendant are as well being
manufactured by the plaintiffs, cannot be ruled out." Mr. Vaidyanatha has
also submitted that the Bombay High Court has also taken a similar view by
nothing that the goods though of different descriptions, were being marketed
through a common trade channel. In a decision in the case reported in 1988 PTC
133, the Bombay High Court has held that the registered trade mark Proprietor
of Bajaj in respect of electrical goods and appliances falling in Class 7,8 and
11 can prevent the use of the mark 'Bajaj' which falls in Class 21 in respect
of domestic utencils on the grounds of common trade channel.
has further 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 453). He has submitted that the view taken in the said decision was
followed in the decision of various High Shoe Company (AIR 1957 Cal. 120),
Bombay High Court in 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 'manufactured tobacco' in Class 34, the
respondent Company is entitled t prevent any other trader of manufacturer to
claim registration of the same trade mark in respect of his products which also
is manufactured tobacco.
has also submitted that the proviso to Section 46(1) of the Trade Marks Act
imports into the proceedings for rectification "the concept of goods of
the same description" pronibited for registration under Section 12(1). In
this connection, Mr. Vaidyanatha has referred to the decision of the English Court reported in (26 RPC 428).
L.J. has held that the alternative of the expression "classes of goods"
which occurred in the U.K. Act of 1883 was made designedly. It was observed by
purpose of it was this: that where the goods are not of the same class, but are
of the same description, taking as an instance, goods made of India-Rubber,
then the intention of the Act of 1883 and that of 1905 is that there shall be a
veto in respect of registering an identical trade mark, or a similar trade mark
in respect of goods falling within the description, as distinguished from the
class. Section 19 is perfectly capable of being read, as is, I think, to be
read, as if it ran thus: No trade mark shall be registered in respect of any
class of goods falling within a particular description of goods, when an
identical or similar mark is already on the Register in respect of any goods
falling within the description. It is true that a man cannot register for a
description of goods, but he can register for a class of goods which fall
within a particular description, and that is, I think, what Section 19 was
has submitted that appellant failed in the attempts of getting its products
registered under Section 12(1) of the Trade Marks Act as the respondent Company
had already got an earlier registration of the same trade mark in respect of
the class of goods namely, manufactured tobacco. The applications to rectify
trade mark in respect of the goods of the appellant is sought under Sections 46
and 56 of the Trade Marks Act by the method of applying for rectification of
the entry in the Register in favour of the respondent Company. Mr. Vaidyanatha
has submitted that such applications for the reasons already indicated are not
maintainable. Accordingly, no interference is called for in these appeals and
the same should be dismissed.
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.
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 has made or intends to make if and when it is registered. Mr. Jayaram
has submitted that sub-Rule (2) of Rule 26 clearly indicates that a registration
may be refused in respect of varieties of goods which may be comprised in a
class. 'Manufactured tobacco' is a broad classification. If a trader or
manufacturer gets registration of a trade mark in respect of such a broad
classification namely manufactured tobacco, then such trader may claim
exclusive right of the use of the trade mark in respect of all the items
falling under 'manufactured tobacco'. Mr. Jayaram has submitted that for the
aforesaid reason, initially when appellant made an application for registration
of quiwam and zarda with the same brand name "charminar", such
application for registration made by the appellant could not be accepted by
indicating that registration given to the Respondent Company covered various
items under the genus. But when the appellant made an application for
rectification of the entries in the register, such entries have been rectified
by limiting the registration to specific product coming under the said broad
classification 'manufactured tobacco', namely, cigarettes by indicating reasons
as to why such rectification would be justified. Mr. Jayaram has submitted that
for the purpose of entertaining the application for registration and allotting
the appropriate slot to the article intended to be registered, index of various
articles has been made. Such index serves as an important guideline to indicate
to which class the article to be registered is to be classified.
goods alphabetically classified in the index ensures rationality of approach in
registering and removes arbitrariness. Mr. Jayaram has, in this connection,
referred to a compilation by Stephen P. Ladas "Patents Trade Marks and
Related Rights - National and International Protection"- Vol.. published
by the Haryana University Press. Mr. Jayaram has submitted that cigarettes
being a specific and identifiable article is dealt separately in the trade
channel and cigarette is specifically mentioned as a distinct commodity of use
in the index in 1975. He has also submitted that from tobacco various articles
can be manufactured but such articles are used differently and have separate
identifications and are separately vendible e.g. cigarette, snuff, quiwam and zarda.
All the said articles 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 classification
'manufactured tobacco' by specifically indicating that the registration relates
to cigarettes only falling under the broad classification. Mr. Jayaram has
submitted that as registration in respect of one or some or the articles under
the broad classification is permissible, there cannot be any difficulty in
limiting the registration earlier given to the respondent Company in respect of
a broad genus namely, 'manufactured tobacco' to one of the species under the
said genus, namely, cigarettes.
has submitted that for the purpose of registration of trade mark, apart from
the classification as sepcified in the Schedule 4, no new classification can be
made. But a particular goods falling under a classification in the schedule may
be registered by indicating the broad classification to which the articles in
question falls. Such registration will not militate against the provisions of
Section 8 of the Trade Marks Act.
has submitted that the respondent Company is certainly entitled to all the
protection under the Trade Marks Act in respect of the articles dealt or
intended to be dealt by the Company namely cigarettes. It has used its trade
mark "charminar" in respect of the goods manufactured by it, namely,
cigarettes and the Company is also entitled to prevent any other trader or
manufacturer to use the brand name in respect of the said article i.e.
cigarette. But it will be not proper to allow him to enjoy monopoly over large
varieties of goods which are distinct in their use and which are clearly
identifiable as separate products and also separately vendible and marketed.
Even when the respondent Company is concerned only in one of such products,
namely, cigarettes if the rectification of trade mark is not made thereby
permitting the other manufacturers and traders to deal with other distinct
products made of tobacco, the respondent Company will be given an unmerited
privilege of enjoying monopoly over all goods coming under a broad class
'manufactured tobacco'. Such position is unjust and inequitable and also not
consistent with the Trade Marks Act and the Rules. Mr. Jayaram has, therefore,
submitted that in the facts of the case, rectification as made by the Assistant
Registrar of Trade Marks is rational and justified and such rectification
should be permitted.
giving our careful consideration 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).
evidence has been led by the respondent Company that the respondent Company had
really intended or even now intends to manufacture any other product of tobacco
other than cigarettes. It will be appropriate to refer to Class 34 of Schedule
4 which is to the following effect:- "34 tobacco raw or manufactured,
smokers' articles matches." Manufactured tobacco is a broad genus covering
large variety of goods and articles. It has been rightly indicated by the
appellant that :
may be consumed by somking and articles made of tobacco which are consumed by
smoking comprise of cigarettes, cigars, cheroot, bidis, pipe tobacco.
tobacco may be consumed by chewing and ingestion and this category includes quiwam
which is in the paste form and applied usually as an ingredient to pan; zarda
in the form of fine flakes (usually aromatic) is applied to pan; gutka also in
flakes which is chewed sometime with the addition of lime (chuna).
consumed by inhalation.
this category snuff which is in powder form and taken in or inhaled through
nose may be mentioned.
is no manner of doubt that the varieties of articles made of tobacco are
differently used and they have their distinctive quality and separate identity.
These articles are also marketed as distinct articles of use in different
manner. In the common trade channel such articles are not only held different
and distinct articles but are marketed separately. It does not require any
imagination to hold that snuff or quiwam are entirely distinct products and
even though the said products and the cigarettes, bidis, cheroot are also made
of tobacco and all such products may come under the broad classification
manufactured tobacco, each of the said products is always held as a distinct
and separate article of use having its specific characteristics.
respondent Company got registration of its brand name "charminar"
under the broad classification manufactured tobacco. So long such registration
remains operative, the respondent Company is entitled to claim exclusive use of
the said brand name in respect of articles made of tobacco coming under the
said broad classifiction manufactured tobacco. Precisely for the said reason,
when the appellant made application for registration of quiwam and zarda under
the same brand name "charminar", such prayer for registration was not
allowed. The appellant, therefore, made application for rectification of the
registration 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 may be permitted to
another by the Registrar, subject to such conditions as may deem just and
proper to the Registrar. It is also to be noted that the expression
"goods" and "description of goods" appearing in Section
12(1) of Trade Marks Act indicate that registration may be made in respect of
one or more goods or of all goods conforming a general description. The Trade
Marks Act has noted distinction between description of goods forming a genus
and separate and distinctly identifiable goods under the genus in various other
Sections e.g. goods of same description in Section 46, Sections 12 and 34 and
class of goods in Section 18, Rules 12 and 26 read with 4th Schedule to the
Rules framed under the Act.
"class" mentioned in the 4th Schedule may subsume or comprise a
number of goods or articles which are separetely identifiable and vendible and
which are not goods of the same description as commonly understood in trade or
in common parlance. Manufactured tobacco is a class mentioned in Class 34 of
4th Schedule of the Rules but within the said class, there are number of
distinctly identifiable goods which are marketed separately and also used
differently. In our view, it is not only permissible but it will be only just
and proper to register one or more articles under a class or genus if in
reality registration only in respect of such articles are intended, by
specifically mentioning the names of such articles and by indicating the class
under which such article or articles are to be comprised. It is, therefore,
permissible to register only cigarette or some other specific products made of
manufactured tobacco as mentioned in Class 34 of 4th Schedule of the Rules.
view, the contention of Mr. Vaidyanatha that in view of change in the language
of Section 8 of Trade Marks Act as compared to Section 5 of Trade Marks Act
1940, registration of trade mark is to be made only in respect of class or
genus and not in respect of articles of different under the genus is based on
incorrect appreciation of Section 8 of the Trade Marks Act and 4th Schedule of
such registration initially had not been done, the rectification of the
registration by limiting or confining the registration of trade mark of the Respondent
Company to particular goods, namely, cigarettes, in the facts and circumstances
of the case, cannot be held as illegal or unjustified.
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.
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.
therefore, allow these appeals, set aside the impugned judgments of the High
Court and restore the order of rectification passed by the Assistant Registrar
of Trade Marks, Madras. By way of abundant caution, it is expressly made clear
that we have not expressed any opinion on the claim of registration of the
trade mark "charminar" in favour of the appellant for quiwam and zarda
being manufactured and traded by the appellant. In the facts of the case, there
will however be no order as to costs.