INTELLECTUAL PROPERTY RIGHT -1 DELHI UNIVERSITY CASEMATE SELECTED PARAGRAPH / SENTENCES

 M/s. Hindusthan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks

TRADE MARKS

M/s. Hindusthan Development Corporation Ltd. v.

The Deputy Registrar of Trade Marks

(1954-5) 59 C.W.N. 320 : AIR 1955 Cal. 519

Dictated by Sikha ma'am  

  (1) Whether the word “Rasoi,” if and when used as a trade mark for the 
hydrogenated groundnut oil manufactured by the appellant company, has a direct reference to the character or quality of the goods within the meaning of section 6(1)(d) of the Trade Marks Act, 1940, and is, as such, outside the ambit of that clause?

 

(2) If the answer to the first question be in the negative, that is to say, if the true view be that the word “Rasoi”, when used as a trade mark for the appellant’s oil, cannot be said to have such direct reference, must the mark be still proved to be distinctive in order to be eligible for registration, or should it be taken to be regarded as prima facie distinctive by the Act itself? 

(3) ....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?

page no.3 .............In the “Motorine” case [In the matter of Compagnic Industrialle Des        Petroles’sApplication (1937) 2 Ch.485] the facts were as follows: In 1901, a company had registered “Motorine” as their trade Mark for lubricating oils and sold large quantities of lubricating oils under that name. In 1907 another Company which had also dealt largely in petrol spirit under the name “Motorine” applied for registration of “Motorine” as their trade mark. This application was opposed by the former Company. The Registrar refused to register “Motorine.”

Question No. 3 raises the question whether the word “Rasoi” even if it be held to have a direct reference to the character and quality of the goods and to be distinctive the word “Rasoi”nevertheless be 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 a particular trader.

The Imperial Tobacco Co. of India Ltd. v.
The Registrar of Trade Marks
AIR 1977 Cal. 413

6. The Deputy Registrar who heard and considered the application held that though the

trade mark is composite in character, its essential feature was ‘Simla.’ ‘Simla’ in its only and

obvious signification is a well known geographical name and the chief town of a State and

further the word ‘Simla’ was inherently not adapted to distinguish the goods of any particular

trader.

it would be unwise to accept the

trade evidence as conclusive on question of acquired distinctiveness. The Deputy Registrar was

unable to hold that the mark had become distinctive even on the material date while a word

purely geographical in its signification, it was held, should not be registered whatever be the

evidence as to its distinctiveness.

7. ...I would refuse registration of the mark even in part B of the Register because of its

inherent incapacity to distinguish the goods of a particular trader and in the exercise of

my discretion. Registration in any form whether in Part A or part B will confer a kind

of monopoly right on the registrants and will naturally interfere with the bona fide

rights of such traders in the locality dealing with the same goods. Such monopoly rights

must not be granted, otherwise wealthy applicants will divide amongst themselves all

the names of important cities and towns of India to the embarrassment and prejudice

of small traders….

8. The learned Judge was also of opinion that ‘Simla’ was neither an invented word nor a

word having a dictionary meaning. Its geographical signification was thus plain and

unequivocal and the snow-clad hills in outline in the label made the geographical significance

inescapable. Even so, it was held, a geographical word is not an absolute disqualification for

the purpose of registration in Part A of the Register, as S. 9(2) of the Act provides that a

geographical name “shall not be registrable in Part A of the register except upon evidence of

its distinctiveness.”

22. In regard to registration in Part B of the register, provisions have been made in sub-s.

(4) of S. 9. The essential conditions are that the mark in relation to goods proposed to be

registered is (1) distinctive, or (2) if not distinctive, capable of distinguishing the goods of the

applicant from those of others. To be distinctive (which means adapted to distinguish) or

capable of distinguishing the goods as aforesaid, there may be some inherent qualities or

distinguishing characteristics in the mark itself which may make it so distinctive or capable of

such distinguishing the goods of the applicant from others. The degree of extent of such inherent

quality that may satisfy the requisite qualification for registration is left to the discretion of the

Tribunal to determine, with his expert knowledge as the extent of quality is always variable

from mark to mark

25. A geographical name according to its ordinary signification is such mark inherently or

otherwise incapable of registration subject to such minor exceptions in regard to other aspects

as noticed in judicial decisions referred hereinafter. In Corpus Juris (Vol. 63, 1933), in Chapter

of Trade Marks etc., Art. 53 (pp. 356-7) it is stated:

Geographical terms and words in common use to designate a locality, a country,

or a section of country cannot be monopolised as trade marks; but a geographical name

not used in geographical sense to denote place of origin, but used in an arbitrary or

fanciful way to indicate origin or ownership regardless of location, may be sustained

as a valid trade mark.

26.....the acquisition of distinctiveness should be on the date when the

application is filed for registration, and the law does not require or provide for acceptance of

evidence of subsequent events.

29......a trade mark may attain the requisite

distinctiveness within a “magically short period and it is not possible to predicate or lay

down any hard and fast rule about the period of time on the expiry whereof only a trade

mark by user can attain distinctiveness required under the statute. Every case will depend

on the attending circumstances and evidence adduced in support of the acquisition of

distinctiveness.

31. In the trade mark we are concerned with there is no dispute that though the mark is

composite in character, including the word ‘Simla’ in bold character with snow clad hills in

outline and an inscription that the product is of the appellant in ordinary character or manner,

the word ‘Simla’ is the prominent feature of the mark and distinctiveness is claimed in respect

of the word ‘Simla.’ Even so the trade mark is not confined to the word ‘Simla’ and in the

affidavits filed by the smokers on behalf of the appellant, the deponents say that the ‘Simla’

label bears the inscription in ordinary character of being the product of the appellant whose

products are of good and standard tobacco. It is accordingly not possible to say that the word

‘Simla’ by itself has acquired a secondary meaning to its customers, so as to conjure in their

mind the cigarettes belonging to the appellant only and to none else even if the mark did not

contain the inscription that it was a product of the appellant. A trade mark like ‘Simla’ on goods

to distinguish them from others goods as claimed must be the trade mark on its own without

any assistance from indications like such goods being a product of the appellant. That is not the

case possible here, as the mark ‘Simla’ does not stand on its own, so that it is not possible to

say that by reason of the use ‘Simla’ is adapted to distinguish or capable of distinguishing as

the goods of appellants to the exclusion of goods of others.

32. As we have seen ‘Simla’ is not an invented word; and though it has no reference to the

character or a place of origin of the goods sought to be registered it is not inherently distinctive

or adapted to distinguish “as there is no sufficient distinguishing characteristic in the mark itself

so that distinctiveness might be expected to result whatever the type and scale of user and thus

secure an estimation of the positive quality in the mark.” This infirmity brings the trade mark

out of the operation of cl. (a) of S. 9(5). There is no other circumstances pleaded and the user

of the trade mark ‘Simla’ by itself as we have seen, on the evidence adduced cannot be said in

fact as distinctive or capable of distinguishing the goods of the appellants from others by use

in consequence whereof. Cl. (b) of S. 9(5) has also no operation. In arriving at this conclusion,

we are not influenced by the finding that three years’ time is too short for acquisition of

distinctiveness, as there may be cases where a product may attain such distinctiveness within a

short spell of time for its inherent qualities of the product.

37.....The courts of law have further imposed the condition that no trade mark should be

allowed to be registered which may hamper or embarrass the traders or trade now or in future

in respect of the place or country which is proposed to be registered.