LLB 4TH TERM ,LB-4036 - INTELLECTUAL PROPERTY RIGHTS LAW -1 ( CASEMATE HIGHLIGHTED MATERIAL ) 2022

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

TRADE MARKS

M/s. Hindusthan Developments. Hindu Corporation Ltd. v.

 The Deputy Registrar of Trade Marks 

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

DAS, J. – This appeal came up for hearing before my Lords the Chief Justice and Mr. Justice
S.R. Das Gupta. The learned Judges differed on certain points. In accordance with clause 36 of
the Letters Patent, the learned Judges stated the points on which they have differed. The points
are the following:

(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) 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 distinctiveness 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?

    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
it is a “mark” used or proposed to be used in relation to goods for the purpose of indicating or
so as to indicate a connection in the course of trade between the goods and some person having
the right to use the “mark.”

Section 6(1) of the Act provides that a trade mark shall not be registered unless it contains
or consists of at least one of the several particulars specified in clauses (a) to (e) of the subsection.
The sub-section is couched in the negative form. Its effect is that in order to be eligible
for registration a mark must contain at least one of the particulars so specified. In other words,
the absence of any one of the particulars will disqualify the mark for registration though the
presence of any one of them will not, ipso facto, make the mark eligible for registration.
Sections 8, 9, 10 and 14(1) lay down certain other matters which may be taken into
consideration in directing registration of a trade mark.
The first question which I have already quoted depends on the true view of section 6(1)(d)
of the Act which provides that a trade mark shall not be registered unless it contains or consists
of one or more words having no direct reference to the character or quality of the goods. I shall
first construe the clause and then discuss the cases which had been cited before me. The mark

in respect of which registration has been applied for is the word “Rasoi.” Section 6(1)(d) will
apply if the word “Rasoi” has no direct reference to the character or quality of the goods in
question which are hydrogenated groundnut oil. The word “Rasoi” has a variety of meanings.
The Deputy Registrar of Trade Marks has collected from different dictionaries the various
meanings of the word “Rasoi.” They are cook-room, kitchen, cooking, cookery, cooked-food.
In considering whether a mark has reference to the character or quality of the goods, the mark
must be looked at, not in its grammatical significance, but as it would represent itself to the
public at large. As the learned Chief Justice points out such a question is a practical question to
be decided by the common understanding of the term among those, who used it or have
occasion to use it in the course of their daily lives and not by what may be recondite meaning

to be found in dictionaries. Hence for our present purpose the word “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 groundnut oil is for cooking purposes. The use of the commodity as intended

or adapted undoubtedly forms part of its character. The 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 Welcome & Co’s Trade
Marks [(1904) 21 R.P.C. 217] known as the “Tabloid case.” The observations relied on are as

follows:

Now I have to ask myself what was the character of this Trade Mark of 1884? What
did the word ‘Tabloid’ convey at the moment it was registered.... As the word was
understood at that time it really conveyed to the hearers no peculiar quality of the goods
which were offered to the public. I think that the word ‘Tabloid’ may properly be
described at that time as being a fancy word.... When one is dealing with the question
whether a word is descriptive, I think one must always bear in mind that for a word to
be really descriptive, it must describe something which is material to the composition
of the article to which the trade mark is intended to apply.

The observations must be read as a whole. The observations are not intended to imply that
the composition of the article is the only material element to be considered in finding out the
meaning of the word character or quality of the goods.
The observations had reference to the question whether the word “Tabloid” was descriptive
or distinctive. This will appear from the observations of the Lord Justice at page 227:
I want to say with reference to them, that according to my view, the word “Tabloid”
was, in substance, an unknown word at the moment when Messrs. Burroughs Welcome
& Co. adopted it.

The construction suggested by Mr. Das would unduly limit the meaning of the word
“character” or “quality.” Various words can be imagined as trade mark which have no direct
reference to the character or quality of the goods but which at the same time have no connection
with the composition of the articles. In my opinion, the word “character” or “quality” of the
goods means their nature or peculiarity or quality and not merely their composition.
Section 6(1)(d) requires that the reference to the character or quality of the goods must be
direct. In order to understand the contention of the word “direct,” reference was made to the

previous changes in the Statute law so far as this requirement is concerned. It may be conceded
that it is not only legitimate but highly convenient to refer both to the former Act and to the
ascertained evils to which the former Act had given rise and to the later 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) of the 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) A.C. 571], 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
direct one. A mere suggestive reference is not sufficient. In the present case the mark “Rasoi,”
as I have already stated, directly refers to the character of the goods which are used ordinarily
for cooking purposes.

In the “Motorine” case [In the matter of Compagnic Industrialle Des Petroles’s
Application (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.”

The applicant Company appealed against the said order and also moved for expunging the trade
mark “Motorine” from the Register. Warrington, J. dismissed the application on the ground that
the word “Motorine” had no direct reference to the quality or character of the goods and was
therefore eligible for registration under section 9(4) of the Trade Marks Act, 1905. It was
observed that though the word “Motorine” suggests that in some way they are oils which are to
be used in connection with a motor, but beyond that it has no reference either to the character
or quality and such reference as the use of the two syllables of the word “motor” in the word
“Motorine” as to the character or quality, seems not to be that direct reference which the Act
contemplates. The decision does proceed on the footing that though the word “Motorine” may
suggest motors, it did not suggest lubricating oil which was not exclusively used on motors but
was used for various other purposes as well. The “Radiation” case [In the matter of Trade
Mark “Radiation”, 47 R.P.C. 37] was a decision of the Controller-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 Kerly on Trade Marks,
7th Ed., p.184, the “Radiation” case is said to be a border line case and not one which is likely
to be repeated. In the “Sheen” case [In the matter of an Application by J. & P. Coats Ltd., 53
R.P.C. 355] 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 convey was referred to as lustre and the word “Sheen” was
not used with reference to the glossiness of the thread. In the “Livron” case [In the matter of
registered trade mark “Liveron” (Boots Pure Drug Co.), 54 R.P.C. 161], the Registrar
expunged registration of the mark “Livron” and his decision was affirmed on appeal. On appeal
Crossman, J., thus observed at page 180: “In my judgment “Livron” is a word whose only
signification is geographical, and hence does not contain the essential particulars in section
9(4).” The cases cited by Mr. Das do not support the view that the word “Rasoi” cannot be held
to have direct reference to the character and quality of the goods.
Mr. Chaudhury, learned Counsel on behalf of the respondents, referred to certain cases in
respect of his submission that very little reference to the character of the goods has been
considered sufficient to exclude the applicability of the corresponding section 9(1)(d) of the
Indian Act of 1938 or section 9(4) of the English Act of 1905. Reference was made to the cases
of In Re Joseph Crossfield & Sons Ltd.; In Re California Fig Syrup & Co.; In Re H.N. Brock
& Co. [(1910) 1 Ch. 130]. The case of In Re Joseph Crossfield & Sons Limited known as
“Perfection” case related to an application to register the word “Perfection” as a trade mark in
Class 47 for common soap. This was disallowed by the Registrar and the Registrar’s decision
was affirmed by Swinfen Eady, J. On appeal the judgment was affirmed. Farwell, L.J. observed
that “Perfection” was not registrable as adapted to distinguish Crossfield soap and that no
amount of user could possibly withdraw the word “Perfection” from its primary and proper
meaning in the soap trade and make it mean Crossfield’s and that the word being a mere

laudatory word, it was idle to call it a trade mark. In the California Fig Syrup Company case,
the learned Judge was of opinion that the evidence given of user was not sufficient to give the
trader the exclusive right to “California.” In H.N. Brock & Co.’s case registration was claimed
in respect of “Orlwoola.” It was held that “Orlwoola” that is, “all wool” cannot be regarded as
distinctive. The words are purely descriptive of their nature. In the case of In Re Leopold
Cassella & Co. [(1910) 2 Ch. 240] 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. It 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 Mills
Ltd.’s Application [45 R.P.C. 421], known as the “Charm” case, 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.’s Application [(1913) 1 Ch. 446] related to
registration of the word “Boardmans” in respect of manufactured tobacco. The word
“Boardman’s” was surname of an individual. The application was rejected by Joyce, J. on the
ground that a mere surname of an individual was not adapted to distinguish the goods of the

applicant within the meaning of section 9(5). In appeal the decision of Joyce, J., was affirmed.
Reliance was also placed by Mr. Chaudhury on the decision of In Re. Application by the
National Machinery Co. [58 R.P.C. 128] known as the “Dex” case. The application was for
registration of the word “Dex” as a trade mark for bolts and screws including deckbolts. The
application was refused by the Assistant Controller on the ground that the word “Dex” was
orally indistinguishable from “decks” and that the “decks” was a perfectly well-known English
word in common use and was likely to deceive or cause confusion. It was also pointed out that
the word “decks” had direct reference to the character and quality of certain bolts under the
terms of paragraph (d) of section 9(1). The decision of the Assistant Controller was affirmed
on appeal by the High Court and by the Court of Appeal principally on the ground that the
discretion of the Assistant Controller was exercised properly. Mr. Chaudhury also referred me
to the decision In Re La Marquise Footwear’s Application [(1946) 2 All E.R. 497]. The
application was for registration of “Oomphies” as footwear for ladies which was allowed by
Evershed, J., and the ground suggested was that the word “Oomph” was an American slang for
sex appeal and that it had no direct reference to the character and quality of the goods. It was
observed that “in approaching a problem of this kind, one has to bear in mind that the Court

must consider, as the legislature considered whether the use of the particular marks in reference
to particular goods would embarass or harass other traders, and it seems to me that where you
take an ordinary word in common use, properly applicable in its ordinary meaning to the class
of goods to which it is sought to be applied by the applicant, the Court will not give to the
applicant in effect a monopoly of that epithet. Where, however, you take a word which is
exceedingly uncommon by comparison, different considerations apply, and, if you say that it
has a direct reference, you are going to assume that this word has a much more precise
significance and a much greater circulation than, I think on the evidence, it has.”
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 construction. 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.”

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.
I shall now take up the second question. The second question involves an enquiry as to
whether the requirement of distinctiveness attaches to each one of the clauses in 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 description in the above clauses, shall not be registrable except upon evidence of its
distinctiveness.” Sections 6(1)(a)(b)(c)(d)(e) of the Trade Marks Act correspond to paragraphs
1, 2, 3, 4 and 5 of section 9 of the English Act. In the case of In the Matter of an Application
by Fanfold Ltd. [45 R.P.C. 325], the question arose whether a mark, in order to be registered
under any of the paragraphs of section 9 of the Trade Marks Act (which corresponds to section
6 of the Indian Act) must be distinctive. The question was answered in the affirmative. At page
331, Lord Hansworth, M.R., observed as follows:
Therefore, the plea that is raised by Mr. Shelley that to ask for distinctiveness in
paragraph (1) is to ask for something more than the statute requires, because it enables you

to use your name in a special or particular manner, is answered by the difficulties which
would arise if a plain name was accepted with the slightest possible addition of some
particular or special feature to mark it. In my judgment Mr. Justice Tomlin came to a right
conclusion upon the meaning of the section 9. I think it does require that there should be
distinctiveness. Paragraph (5) says: ‘Any other distinctive mark.’ The use of the word
‘other’ seems to be of importance. The paragraph goes on ‘but a name, signature or word
or words, other than such as fall within the descriptions in the above paragraphs (1), (2), (3)
and (4) shall not be registrable under the provisions of this paragraph except upon the
evidence of its distinctiveness.’ Finally, after the proviso, which does not apply, the words
to be found ‘for the purpose of this section’ not any particular paragraph or part of a section
– ‘distinctive’ shall mean adapted to distinguish the goods of the proprietor of the trade

mark from those of other persons.
The Master of the Roll went on to add: “The result of that is this, that in order to be
registrable under paragraph (1) you must, first of all, have a name which is represented in a
special or particular manner; but (it may be either superadded or interpreting what is meant by
‘special or particular manner’) there must be a distinction, and that distinction is required so
that there may be an indication that the goods on which the mark is put are the goods of the
proprietor, and the distinction must be one which is adapted to distinguish those goods of the
proprietor for the purpose of enabling the definition of a trade mark to be fulfilled, a definition
to which I have already referred.”
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 the
affirmative by Lord Hanworth, did not arise in that case. Reference to the judgment of
Lawrence, L.J. at page 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 the
matter of Boots Pure Drug Co. Ltd., Trade Mark “Livron” [54 R.P.C. 161, 179]. 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.” It was laid down that
“no trade mark can be validly registered unless it contains at least one of the particulars
enumerated in section 6(1) of the Indian Trade Marks Act, 1940, and that to comply with the
sub-section the particulars relied on must also be distinctive.” My conclusion therefore is that
even if the word “Rasoi” cannot be said to have such direct reference to the character and
quality of the goods within section 6(1)(d) of the Act, the mark “Rasoi” must still be proved to
be distinctive in order to be eligible for registration.
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. It is undoubtedly true
that the common words of a language are public property and that no one should be allowed to
appropriate one of such words to his exclusive use and thereby deprive other persons of the
legitimate right to use the said word. This was observed by Fry, L.J., in the case of In Re Dunn
[(1889) 6 R.P.C. 379 C.A.] and by Cozens-Hardy, M.R. in the same case and by Evershed, J.,
in La Marquies Footwear’s Application [(1946) 2 All E.R. 497]. The above observations are

however to be read as not imposing an absolute bar to the registration of a common word as a
trade mark. The principles laid down in the above cases would ordinarily disentitle the applicant
to have a common word registered. In exceptional circumstances the rule may however be
inapplicable, viz., where the common word has lost its primary meaning by long user of the
word by a trader in relation to his goods and has become identified with the particular goods of
that trader. In such a case the principle above enunciated will not be applicable. In the present
case, however, the word “Rasoi” has not become distinctive of the applicant’s goods and as
such it is also eligible for registration on the ground that no trader can have ordinarily a
monopoly of an ordinary word of the language.

* * * * *

The Imperial Tobacco Co. of India Ltd. v.

The Registrar of Trade Marks

AIR 1977 Cal. 413

SALIL KUMAR DATTA, J. – This is an appeal from the judgment and order of P.B.

Mukharji, J. dated May 24, 27 and 28, 1968 (Reported in AIR 1968 Cal 582) in an appeal under

S. 109 of the Trade and Merchandise Marks Act 1958. By that judgment the order of the

Registrar of Trade Marks dated March 26, 1968 rejecting the application for registration of a

trade mark filed by the Imperial Tobacco Company of India Ltd. in Part A of the Register or

alternatively in Part B of the Register was affirmed. The trade mark for registration is a label,

used as wrapper of packets of cigarettes bearing the device of snow clad hills in outline with

the word ‘Simla’ written prominently in various panels of the label with small inscription that

the content is ‘a product’ of the applicant company. The application had been made for

registration of the trade mark in class 34 in respect of manufactured tobacco. In course of

hearing of this appeal, an application has been filed stating that the name of the appellant has

since been changed to I.T.C. Ltd. under the provisions of the Companies Act, 1956 and

accordingly name of the appellant has been amended to read as “I.T.C. Ltd.” by order of this

court and the cause title has been directed to be amended in consequence.

2. The appellant filed an application on April 20, 1960 for registration of the said trade

mark in Part A of the register stating that the said trade mark was ‘proposed to be used’ in

respect of manufactured tobacco in clause 34. The Registrar of Trade Marks sent a reply on

December 9, 1960 to the following effect:

Word ‘Simla’ which forms the essential and distinguishing feature of the mark is

a famous geographical name and is not registrable except on very strong evidence of

distinctiveness. No such evidence is possible as the mark is proposed to be used. You

should therefore show cause why the application should not be refused… .

3. By its letter dated July 17, 1963 the appellant withdrew the application and on the same

date filed a fresh application for registration of the same trade mark in class 34 in respect of

manufactured tobacco. It was stated therein that during the period from April 1960 to June 30,

1963, about 42 crores of such cigarettes under the said trade mark had been sold throughout

India while Rupees 15.50 lakhs had been spent as advertisement costs, the value of cigarettes

sold being Rs. 1.14 crores. In support of the application the appellant also filed 22 affidavits

from consumers, dealers and shopkeepers throughout the country to establish that the trade

mark had in the meantime acquired distinctiveness and further, it appears the cigarettes have

been in continuous use since then.

4. Thereafter there was a hearing of the application before the Deputy Registrar of Trade

Marks, Calcutta and by letter dated December 29, 1965 issued by the Asstt. Examiner of Trade

Marks the appellant was informed that the materials on record and arguments advanced on its

behalf were duly considered by the Deputy Registrar and the said application for registration

of the trade mark either in Part A or Part B of the Register had been refused by him.

5. The Deputy Registrar forwarded grounds of his decision under S. 18(6) of the Act dated

March 28, 1966 to the appellant on its requisition. Against this decision, the appellant preferred

an appeal to this Court under S.109(2) of the Act which was heard by P.B. Mukharji, J. and

was dismissed as already stated. Thereafter the applicant preferred a further appeal to the Bench

of this Court under S. 109(5) which has been heard by us.

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. In regard to the contention that the mark had become distinctive on the material date by

reason of extensive sales and advertisement, it was held that 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. As to deceptiveness of mark as to the place of origin of the

goods, though no tobacco had been grown in or around Simla and there was no market as such

for tobacco, an ordinary smoker without having any special knowledge, might associate the

origin of cigarettes with Simla. The Deputy Registrar was also of opinion that it could not be

predicated that the name would not be required, then or later, by other traders for bona fide use

in respect of similar goods and thus it would be wrong, in exercise of his discretion, to accord

registration of the name to the appellant.

7. As to registration in Part B of the register, the Deputy Registrar observed as follows:

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….

The application for registration, as already stated, was accordingly refused.

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.” A geographical name in its ordinary signification can thus be registered

upon evidence of distinctiveness and such evidence will establish if the mark has acquired

distinctiveness. This is the position in law in England and is also the statutory position in law

under the Trade and Merchandise Marks Act of 1958. The affidavit evidence by dealers

adduced by the appellant in support of the proof of acquisition of distinctiveness was considered

insufficient to establish distinctiveness in “a magically short time of barely three years,” as

“distinctiveness of goods in a trade by association with a particular name requires normally a

hard laborious time consuming process in business.” The court agreed with the finding of the

Registrar that the appellant’s mark had not become distinctive and evidence is not such as to

prove such distinctiveness.

9. As to registration in B Part of the Register, the Court referred to the guidelines laid down

in sub-s. (5) of S. 9 which were considered to be illustrative and not exhaustive. The first

consideration in Cl. (a) is that the mark must be inherently distinctive or is inherently capable

of distinguishing. The second feature of Cl. (b) is where by reason of the use of trade mark or

any other circumstances the trade mark is in fact so adapted to distinguish or is in fact capable

of distinguishing. The Court was of opinion that even applying either of the tests, ‘Simla’ trade

mark is neither inherently distinctive nor is inherently capable of distinguishing the appellant’s

goods. The court further found that the use of the trade mark ‘Simla’ or any other circumstances

in fact does not make the appellant’s trade mark adapted to distinguish or capable of

distinguishing the appellant’s goods. The court felt that the term ‘capable of distinguishing’

connotes both present capability with reference to goods, market, geography, consumer as also

future potentiality, while adapted to distinguish implies the nature of adaptation in the mark

and also what is in the mark which is adapted to distinguish. The court agreed with the

discretion of the Registrar in refusing registration of the trade mark either in Part A or Part B

of the Register and the appeal was accordingly dismissed. This judgment is reported in AIR

1968 Cal 582.

10. Mr. Noni Coomer Chakrabarti, learned counsel for the appellant has challenged the

judgment of Mukharji, J. as unsustainable in law on various points. On the finding that a

geographical word is not an absolute disqualification for registration, it was contended, the

learned Judge should have accepted, upon the affidavit evidence, that the trade mark had

acquired distinctiveness during the period of three years it had been offered to public who had

spent over Rs. 1.14 crores for ‘Simla’ cigarettes, there being no rule of law laying down the

minimal period for acquisition of distinctiveness by use. Though contending that upon the

evidence adduced and unchallenged, the appellant is entitled to have its trade mark registered

in Part A of the register, Mr. Chakravarti submitted that the appellant will be content, for the

time being, if its trade mark is registered in Part B of the Register. Accordingly without giving

up his objections in regard to the refusal of registration in Part ‘A’ of the Register, he

concentrated his attack against the refusal of registration of the trade mark in Part B of the

Register.

16. Mr. Chakrabarti has referred to the above provisions and submitted that the conditions

for registration in Part B of the register have been fulfilled by the trade mark sought to be

registered. He submitted that the trade mark is inherently distinctive or is inherently capable of

distinguishing the appellant’s goods from others or in the alternative, the trade mark by reason

of its use has become adapted to distinguish or is capable of distinguishing as aforesaid, as

required in Cls. (a) or (b) of sub-s. (5) of S. 9 of our Act. He submitted that these clauses are

disjunctive and if any of the tests are satisfied, the appellant is entitled to registration at least in

Part B register. These contentions have been strongly disputed by Mr. Roy Choudhury, learned

counsel for the respondents, who has referred to the conjunctive pronoun ‘and’ used in

connecting Cls. (a) and (b) of S. 9(5). The tests required for registration in Part B of the register

are both as provided in Cls. (a) and (b), so that, it is submitted, even if it can be said that the

trade mark is capable of distinguishing by use it is neither inherently distinctive nor inherently

capable of distinguishing the appellant’s goods to the extent necessary.

17. In Halsbury’s Laws of England (3rd ed., vol. 38, Art. 880) it is laid down as follows:

880. Requirements for registration in Part B – To be registrable in Part B of the

register, a mark must be capable of distinguishing goods for which it is registered and

in judging of such capacity the tribunal may take into account both the inherent

qualities of the mark and the extent to which user or other circumstances has rendered

it so capable.

18. In Kerly’s Law of Trade Mark and Trade Names (10th ed.) it has been observed:

3.72 …It will be apparent on comparing S. 10 with S. 9 that so far as registrability

is concerned, the differences between Part A and Part B are (1) that in the former the

mark must be “adapted to distinguish” and in the latter “capable of distinguishing” (the

context being virtually identical); and (2) that in the case of names, signatures or words

which do not fall within paragraphs (a) to (d) of S. 9(1), so that registration in Part A

can only be granted upon evidence of distinctiveness such evidence is not required for

Part B if it is possible without evidence to satisfy the tribunal that the mark is capable

of distinguishing the goods.

19. Even so, the provisions both of Ss. 9(2)(b) of the British Act and our S. 9(5), Cl. (b)

also require evidence of use to establish that the trade mark is in fact adapted to distinguish or

capable of distinguishing the goods in respect whereof registration is sought for.

20. In considering the implication of the words “adapted to distinguish” for registration in

Part A of the register, and words “capable of distinguishing” for registration in Part B of the

register, in the case of ‘Weldmesh’ trade mark reported in 1965 RPC 590 (595), Lloyd-Jacob J

observed as follows:

Section 9 and Part A of the register are concerned with the registration of marks

the primary significance of which is that they are adapted to distinguish the goods of

the proprietor and the qualification for registration is the possession of such

significance and this may be immediately evident or require use or special

circumstances to demonstrate it.

Section 10 and Part B of the register are concerned with an alternative method of

registration for marks which can be shown to be capable of distinguishing goods of the

proprietor and this is secured by proof of the development of a secondary meaning which

outweighs the apparently non-distinctive character of the mark when viewed in isolation. It is,

therefore, not unreasonable to regard the two expressions ‘adapted to distinguish’ and ‘capable

of distinguishing’ as being deliberately chosen so as to direct the particular enquiry aright, the

former emphasising that it is because of the presence of a sufficient distinguishing characteristic

in the mark itself that distinctiveness is to be expected to result whatever the type and scale of

the user and thus secure an estimation of a positive quality in the mark; and the second that, in

spite of the absence of a sufficient distinguishing characteristic in the mark itself,

distinctiveness can be acquired by appropriate user, thereby overcoming a negative quality in

the mark.”

12

21. This interpretation was approved by Willmer L.J. in the Court of Appeal where the

‘Weldmesh’ case, 1965 RPC 590 went up in appeal and the other lawlords did not expressly or

by implication disapprove the proposition (vide 1966 RPC 220), as also noted in the judgment

under appeal before us.

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.

23. If however the mark has no inherent distinguishing qualities or features, the

distinctiveness may be acquired by appropriate user or other circumstances thereby overcoming

the negative quality in the mark. Here again the Tribunal has been given the discretion to

register a mark in the B part of the register taking into account the extent of the distinctiveness

or capability of distinguishing the applicant’s goods from others in fact acquired by reason of

the use of the trade mark or other circumstances. There is thus actually no question of exclusion

of one clause by another in sub-s. (5) of S. 9 but all relevant factors are to be taken into

consideration by the Tribunal who as an expert will exercise his discretion in the light of the

provisions of law and judicial interpretation thereof. As has been pointed out by Kerly, a

decision upon registrability involves balancing an inherent tendency to unregistrability on the

one hand against evidence showing distinctiveness in fact on the other.

24. All these are subject to the condition that where inherent unsuitability is so strong no

degree of distinctiveness in fact can counter-balance it, so that some marks are totally

unregistrable. This is for the reason that if any mark for example violates the requirements of

sub-clause (d) of sub-s. (1) of S. 9 such mark, because of inherent infirmity, can never be

distinctive or capable of distinguishing the goods of the applicants sought to be registered from

others goods either inherently or by reason of user of the mark or other circumstances.

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.

13

According to S. 9, sub-s. (1), Cl. (d) of our Act, a trade mark for registration in ‘A’ part of

the Register must contain one or more words having no direct reference to the character or

quality of the goods and not being according to its ordinary signification, a geographical name.

26. The first point for consideration is whether the test of Cl. (b) of S. 9(5) has been satisfied

in this case, that is, if by reason of use the mark in fact has become distinctive as adapted to

distinguish or is in fact capable of distinguishing the goods of the appellant from others. The

appellant has submitted affidavit evidence to prove that on the date of application on July 20,

1963 the goods (cigarettes) introduced in 1960, have in course of three years user reached

fantastic figure of sale at over Rs. 1.14 crores with advertisement costs of over Rs. 15.50 lakhs.

Mr. Chakraborty also filed an application before us in support of his case that the sale figure

has been constantly increasing since along with costs of advertisement. We have however

thought it fit to confine ourselves to facts as existing on the date of application which is the

usual practice followed in such cases. Though evidence as to subsequent events may be

admissible as throwing light on the question, we shall proceed on the basis that the ‘Simla’

cigarettes have not been withdrawn from the market and the sale of ‘Simla’ cigarettes has been

continuing. Even so, 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.

27. Before we proceed further we shall consider two aspects of the controversy in respect

whereof grievance has been made before us. The learned Judge did not approve of the conduct

of the appellant in not withdrawing its earlier application of April 20, 1960 till the date of filing

the present application on July 20, 1963 while in the meantime the appellant went on building

its trade. As laid down in Kerly’s book referred to above, “an applicant is entitled to withdraw

an application and to make a second application so as to obtain the advantage of a longer period

of use and earlier application was obviously kept pending to meet a possible challenge in the

meantime. That context, we say with respect, has no bearing on the merits of the application.

28. As to evidence also, the learned Judge found affidavits of dealers and employees

unacceptable as they were not disinterested witnesses while the affidavits of smokers were held

not dependable. We are unable to subscribe to this view, as who else other than dealers and

their employees would be the fit persons to state of the position in the market, the consumers’

demand and of the sale figures in respect of the goods. There is also no reason to disbelieve the

smokers in the context of the huge sale figures even on the date of the application.

29. Let us now examine if the trade mark could have attained the distinctiveness on the

date of application. There can be little dispute that the acquisition of distinctiveness of a

trade mark is a long, laborious and time consuming process. Even so, no time limit is fixed

by statute and in the British Act of 1919 two years bona fide user was considered sufficient.

There may be a case where for sundry reasons, 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.

14

30. We shall now consider if the trade mark has attained ‘distinctiveness’ on the date of the

application. ‘Distinctiveness’ has been understood to mean ‘some quality in the trade mark

which earmarks the goods so marked as distinct from those of other producers of such goods.

In Liverpool Cables case [(1929) 46 RPC 99)] the trade mark applied for registration was

‘Liverpool Cables’ in respect of electric cables. In Glastonburys case [(1938) 55 RPC 253)]

the trade mark was ‘Glastonburys’ in respect of slippers etc. In Yorkshire case [(1954) 71 RPC

150] the trade mark sought to be registered was ‘Yorkshire’ for solid-drawn tubes and capillary

fittings of copper or copper-alloys. In Tijuana Smalls case [1973 RPC 453] the trade mark

under consideration was ‘Tijuana Smalls’ the first word in block capitals. In all these cases the

trade mark was a word of combination of words and it was claimed that by reason of user, the

trade mark has acquired a secondary meaning distinguishing goods under the mark sought to

be registered as of the applicants from similar goods of others.

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.

33. Even assuming that the trade mark ‘Simla’ has become capable of distinguishing by

use thus fulfilling the condition of Cl. (b) of S. 9(5) entitling registration in Part B of the register,

there are other formidable hurdles in the way for registration as already noted.

15

34. As we have seen, the mark ‘Simla’ is a geographical name and the snow-clad hills in

outline in the mark indicates its use in ordinary or geographical signification, so that the mark

is neither a fancy or invented word nor one with a secondary meaning. As has been observed

in Karly’s Treaties (10th Edition):

8.51. A word is not debarred from registration under S. 9(1)(e) as a distinctive

word merely because it is geographical and so cannot be registered under S. 9(1)(d).

Some geographical names can be inherently adapted to distinguish the goods of

particular traders, but only if it can be predicated that they are such names as it would

never occur to any other trader in such goods to use. At the other extreme, the name of

a major industrial area or city will be totally unregistrable in respect of almost any

goods. In between come the marks calling for more or less evidence that they are

distinctive in fact.... It may tip the balance that the applicant can show that he has a

natural or legal monopoly of the production of goods concerned in the place concerned;

but that alone will not make a geographical name registrable without substantial

evidence of distinctiveness.

Though Cl. (d) of S. 9(1) which refers to geographical name in ordinary signification relates

to registration in Part A of the register, the distinctiveness of the trade mark which makes it

capable of distinguishing the applicant’s goods, as required in Cl. (b) of S. 9(5) in respect of

registration in Part B of the register, it is a vital and essential element for the purpose. Such

distinctiveness is not possible for any geographical name in its ordinary or geographical

signification. Though the rule has been relaxed in respect of small and insignificant place or

where there is no geographical significance of the mark, if the geographical name propounded

for registration is the name of an important country or a large district, county or city of

commercial importance or has a geographical signification, the mark will be refused

registration notwithstanding evidence of long and extensive use. In Liverpool Electric Cable

Co. Ltd. case [(1929) 46 RPC 99] where registration was sought for trade mark ‘Liverpool’ in

both Parts A and B of the register it was held that the name of an important commercial centre

as Liverpool even though it may in fact be distinctive of the goods in respect of which it is

sought to register it is not registrable. In respect of Monte Rosa Cigarettes or Teneriffe Boiler

Plates it was noted that there was no geographical significance in the mark which were mere

pet names. It was further held that that Liverpool being a well known city is geographical and

not capable of distinguishing the goods of any particular trader and such registration will tend

to embarrass traders who are in the trade or who may hereafter so trade as they would have

difficulty in describing their goods if prevented from using the word ‘Liverpool’ Cables.

35. In A. Bailey & Ltd. v. Clark, Son & Morland Ltd. [(1938) 55 RPC 253] known as

Glastonbury case, the respondent obtained registration as a trade mark of the word

‘Glastonburys’ used in connection with goatskin slippers and the appellants brought an action

to rectify the register by expunging trade mark ‘Glastonburys.’ The prayer was allowed on the

ground that (in spite of ‘S’) Glastonbury was a geographical name prima facie unregistrable

under S. 9 and evidence was unsuitable to prove the word to be generally distinctive of the

respondents’ goods and the word was not adapted to distinguish. The Court of Appeal held that

‘Glastonburys’ had become distinctive and had acquired as secondary meaning indicating

exclusively the goods of the respondents. The House of Lords on further appeal held that the

page 16

mark was not adapted to distinguish the goods of the respondent from those of other persons

and its presence in the register would hamper rights of other traders. It was held that the word

‘Glastonburys’ is obviously a geographical name indicating the town of Glastonbury which had

a reputation of manufacturers of Sheep-skin slippers and parties were such manufacturers. It

was observed that the respondents and future manufacturers of slippers in Glastonbury or their

retail customers should not be hampered or restricted by the presence of the mark on the register

while evidence was also insufficient to prove distinctiveness or that the mark was a fancy name.

36. In respect of Yorkshire Copper Works Ltd. application for registration of the trade mark

‘Yorkshire’ [(1954) 71 RPC 150)] on its goods of copper tubes and capillary fittings, the House

of Lords proceeded on the basis that the trade mark has acquired 100 per cent distinctiveness.

It was held that as the mark is beyond question a geographical name, even though it has no

direct reference to the character or quality of goods, it cannot be registered if it is according to

its ordinary signification a geographical name. Lord Simonds L.C. observed that the Registrar

could not have come to any other conclusion than refusal of the application.

Unless having found distinctiveness in fact, he (the tribunal) needed to pay no

regard to the other factor of inherent adaptability, he was faced with by the fact that

there could not well be a geographical name less inherently adapted “than Yorkshire

to distinguish the goods of the appellants (applicants) .... For just as a manufacturer is

not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim

for his own a territory whether country, county or town, which may be in the future if

it is not now, the seat of manufacture of goods similar to his own.

37. The position emerging from the statutory provisions and the judicial interpretations

thereon appears to be that a trade mark in Part B of the Register will be registered if the mark

is distinctive or capable of distinguishing the applicant’s goods from others. In determining

whether the mark is distinctive or capable of distinguishing, the Tribunal shall have regard if

the mark is inherently distinctive or is inherently capable of distinguishing as aforesaid. If not,

the Tribunal will further examine if by reason of use or other circumstances, the trade mark has

in fact become distinctive (as adapted to distinguish) or capable of distinguishing as aforesaid.

All the same the Tribunal will refuse registration in respect of either parts of the register if the

trade mark is inherently incapable of being distinctive or inherently capable of distinguishing

the goods of the applicants from others. Such reasons obviously are the disabilities violating

the provisions of Cls. (c), (d) and (d) of sub-s. (1) of S. 9 of our Act which again may not be

exhaustive. 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.

38. Mr. Chakrabarty has referred us to the decision in Tijuana Smalls’ case where

registration in respect of cigars was allowed in Part B (1973 RPC 453). Tijuana is a town in

Mexico with inhabitants over 2 lakhs. Graham J. in allowing registration in Part B held that the

question whether a geographical word could be registered was of degree. These words whose

primary signification is geographical and where the geographical significance is so general and

so likely to be adapted or desired for use by more than one trader, it would be wrong however

distinctive they might in fact have become ever to allow one trader by registration to seek to

monopolise them (e.g. Yorkshire or Liverpool). There are other ‘geographical’ words (e.g.

page 17

North Pole) where, for one reason or other, when considered as applied to the goods in respect

of which it is sought to register them, it is clear that the use is in fact clearly not geographical

but fanciful, and was therefore, at least, capable, particularly by use, of being distinctive in

practice of one of manufacturers’ goods. Registration could, therefore, in such cases be allowed

without causing inconvenience to or encroaching upon the reasonable trading rights of other

manufacturers. The learned Judge found that the conclusion that Tijuana, an arid area, could

well become tobacco producing centre being so improbable should be rejected.

39. Strong reliance was placed on this decision by Mr. Chakravarti who contended that

Simla was never a tobacco producing centre or likely to be so and there is no chance or occasion

for any prejudice being caused to other traders or manufacturers. He also referred to the Trade

Marks Journal published by the Government containing advertisements of various geographical

names for acceptance: ‘Sheemla’ for agarbati, ‘Gulmarg’ for wire, ‘Shalimar’ for engineering

goods, ‘Kalighat’ for biddies were cited and referred. In all such cases it appears that the names

prima facie are fanciful without geographical or ordinary signification and at this stage it will

not be proper to depend on those marks without further material or evidence. The propositions

of law in respect of geographical names have been referred to above and in view of the imprint

of snow clad hills in outline in the trade mark ‘Simla’ the ordinary or geographical signification

is obvious and patent even though it has no reference to the quality or place of origin of the

goods as at present advised. Further, registration of such trade mark may hamper or embarrass

the trade or traders in or around the locality in future as held by judicial authorities, cited earlier

in similar cases. Also ‘Simla’ is too prominent a city, the capital of Himachal Pradesh, well

known in the country and abroad and in its ordinary or geographical significance it is inherently

neither distinctive nor adapted to distinguishing the goods of the appellant as a particular trader

from those of others, and is also hit by the provisions of S. 9, sub-s. (1), Cl. (d) of the Trade

and Merchandise Marks Act, 1958. In view of the above position, the Deputy Registrar in

rejecting the application for registration in Part A or Part B of the Register rightly exercised his

discretion conferred on him by law.

40. For the aforesaid reasons the appeal fails and is dismissed without any order for costs

in the circumstances.

* * * * *

 Page18

Geep Flashlight Industries Ltd. v.
The Registrar of Trade Marks

AIR 1972 Del. 179

M.R.A. ANSARI, J. – The appellants filed an application before the Assistant Registrar of
Trade Marks, Delhi, for registration of the trade mark consisting essentially of the word ‘Janta’
in respect of electric torches. The application was advertised in the Trade Marks Journal.
Although no objections were filed by any one against the registration of the appellant’s trade
mark, the learned Assistant Registrar declined to register the appellant’s trade mark mainly on
the ground that it was not either distinctive or capable of distinguishing. The appellant seeks to
challenge the said order of the learned Assistant Registrar.

2. The learned Assistant Registrar was of the view that the word ‘Janta’ was phonetically
akin to the word ‘Janta’ which was a word of common use and which was neither distinctive
nor capable of distinguishing the goods of the appellant. The learned counsel for the appellant
contended that the word ‘Janta’ is quite distinct from the word ‘Janta’ and that in Hindi the
word ‘Janta’ meant knowledge and that it was in that sense that the word was used in the
appellant’s proposed trade mark. There is hardly any substance in this contention. When an
objection was raised by the office of the Registrar that the word ‘Janta’ had a direct reference
to the character or quality of the goods and was not distinctive, the appellant in its letter dated
July 25, 1961 admitted that the word ‘Janta’ has a dictionary meaning as “people” but
proceeded to state that it did not have any direct reference to the character or quality of the
goods on which it was used. Further, in some of the documents filed by the appellant, namely,
Exs. A-9, A-10, A-22, A-36, A-38 and A-39, which represented invoices and orders for the
appellant’s goods, the word mentioned is Janta. Therefore, the appellant’s application for
registration of its trade mark must be considered on the basis that the word ‘Janta’ was
equivalent to the word ‘Janta.’

3. For a trade mark to be qualified for registration, it should satisfy the conditions laid down
in Section 9 of the Trade and Merchandise Marks Act, 1958 (the Act). The effect of clause (d)
of sub-section (1) and sub-section (2) is that if the word in that trade mark has a direct reference
to the character or quality of the goods, then, it shall not be registered. According to the learned
Assistant Registrar, the word ‘Janta’ has a direct reference to the character or quality of the
goods, because the goods bearing such a name indicate that they are cheap in price and meant
for the common man. The appellant admittedly manufactures electric torches of various
qualities and the torches bearing the name ‘Janta’ are the cheapest. But these facts do not
necessarily lead to the conclusion that the word ‘Janta’ is descriptive of the character or quality
of the goods. The price is undoubtedly one of the factors which will be considered by the
purchaser but the prime consideration would be the utility of the goods. If the goods are of poor

quality and do not serve any useful purpose, then no one would purchase the goods
notwithstanding the low price. The figures of sales of the appellant’s ‘Janta’ torches which even
according to the learned Assistant Registrar are quite impressive, indicate that these torches
have given satisfactory performance and it is for that reason that they are in such demand in the
market. I am, therefore, unable to agree with the view of the learned Assistant Registrar that

page 19

the word ‘Janta’ has a direct reference to the character or quality of the goods. Therefore, the
proposed trade mark of the appellant does not come within the mischief of Clause (d) and is,
therefore, not disqualified for registration under sub-section(2) of Section 9 of the Act.
4. The appellant’s application being one for registration of its trade mark in Part B of
the Register, the said trade mark is disqualified from registration under sub-section (4) of
S. 9 unless it is distinctive but 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, either generally or, where the trade mark is proposed to
be registered subject to limitation, in relation to use within the extent of the registration.
According to the learned Assistant Registrar, the word ‘Janta’ being a word of common use
is neither distinctive nor is capable of distinguishing the goods of the appellant. There is no
difficulty in agreeing with the learned Assistant Registrar that the word ‘Janta’ is not
inherently distinctive or inherently capable of distinguishing. But the learned counsel for
the appellant seeks to rely upon clause (b) of sub-section (5) of S. 9 of the Act which,
according to him, permits the registration of a trade mark which by reason of its use is in
fact adapted to distinguish or is in fact capable of distinguishing the appellant’s goods. In
this connection, learned counsel points to the following observations of the learned
Assistant Registrar:
The total turnover for the period from 1952 to 1961 is of the order of over rupees

23 lacs which is quite impressive for a low priced consumer article like electric torch
xxx. The Documentary evidence filed in support of user and advertisement consists of
a large number of orders and invoices covering the advertisement cuttings from
newspapers. These exhibits clearly show that the applicants have been selling torches
under the name ‘Janta’ from 1951 onwards and have also advertised it very extensively
all over India in various newspapers in different languages x x x x. The evidence before

me shows that the trade mark ‘Janta’ by virtue of extensive use has in fact come to
denote the goods of the applicants to the traders and dealers in electric torches.

On the basis of the above observations, the learned counsel contends that the word ‘Janta’
has been associated by the public with the torches produced by the appellant and that, therefore,
by reason of the use of the trade mark, it had in fact become adapted to distinguish or capable
of distinguishing the appellant’s goods within the meaning of clause (b) of sub-section (5) of
S. 9.

5. In support of this contention, the learned counsel has also referred to a decision of the

Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories, [AIR 1965 SC 980]. That was, however, a case that was decided under the Trade
Marks Act, 1940 which contained the following proviso to Section 6 of the said Act:
Provided that in the case of a trade mark which has been continuously used (either
by the applicant for the registration or by some predecessor in his business, and either
in its original form or with additions or alterations not substantially affecting its
identity) in relation to which registration is applied for, during a period from a date
prior to the 25th day of February 1937, to the date of application for registration, the
Registrar shall not refuse registration by reason only of the fact that the trade mark is

Page 20

not adapted to distinguish as aforesaid, and may accept evidence of acquired
distinctiveness as entitling the trade mark to registration.
It was because of the facts of the case before the Supreme Court fell within the scope of
this proviso that registration was granted notwithstanding the finding that the word sought to
be registered was neither inherently distinctive nor inherently adapted to distinguish. This
decision will, therefore, not help the appellant. On the other hand, some of the observations of
the Supreme Court in that case go against the appellant’s contention.
6. Their Lordships quoted with approval the following observations of Fry, L.J. in the case
of In Re: Dunn [(1888) 6 RPC 379]:

It is said that the words ‘Fruit-Salt’ have never been used in collocation except by
Mr. Eno. Be it so … I cannot help regarding the attempt on Mr. Eno’s part as an
instance of that perpetual struggle which it seems to me is going on to enclose and to
appropriate as private property certain little strips of the great open common of the
English Language. That is a kind of trespass against which I think the courts ought to
set their faces.
In the present case also, by seeking a monopoly to use the word ‘Janta’ in its trade mark,

the appellant is attempting to enclose and to appropriate as private property certain little strips
of the great open common of the Hindi Language. Their Lordships once again quoted with
approval the following observations of Lord Simon in Yorkshire Copper Works Ltd’s
Application for a Trade Mark [(1954) 71 RPC 150]:
I am content to accept the statement reiterated by their learned counsel that the
mark had acquired 100 per cent distinctiveness .... I must express my emphatic dissent
from the proposition which was strenuously urged by counsel for the appellants that
distinctiveness in fact is conclusive …. In my opinion the decisions of this house in W
and G case (1913 AC 624) and the Glastonbury case (1938 AC 557) are fatal to this
proposition and I am content to accept as accurate the clear exposition of those cases
given by the learned Master of the Rolls in the present case. [J]ust as a manufacturer
is not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim
for his own territory, whether country, county of town, which may be in the future, if
it is not now the seat of manufacture of goods similar to his own.
The trade mark which was sought to be registered in that case was ‘Navarathana.’ This
trade mark was refused registration on the ground that it did not satisfy the conditions laid down
in Section 6 of the Trade Marks Act 1940 which is in para materia with Section 9 of the Act
except for the proviso to Section 6 of the former Act which is omitted in Section 9 of the Act.
Their Lordships observed that:
If the matter had to be decided in terms of Section 6(1) alone without reference to
the terms of the proviso to sub-section (3) x x x x we see great force in the submission
of the learned counsel.

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7. As a result of the above discussion, it must be held that although the appellant had led
evidence to prove that its torches bearing the name ‘Janta’ have acquired considerable
reputation in the market, still the word ‘Janta’ is in fact not adapted to distinguish or is in fact
not capable of distinguishing the appellant’s goods.
8. Further, even if the appellant’s proposed trade mark satisfies the conditions prescribed
in Section 9 of the Act, the appellant is not entitled as a matter of right to the registration of his
trade mark. It is still open to the Registrar to decline to register the appellant’s trade mark in

the exercise of his discretion under Section 18(4) of the Act. This exercise has undoubtedly to
be exercised judicially and not capriciously or arbitrarily. But in this case the learned Assistant
Registrar has given his reasons for exercising his discretion against the appellant. He has
observed that the word ‘Janta’ in India has a special significance and it is used very widely in
various situations to denote or connote people or the common man and that the word ‘Janta’ is
one of those words which should be kept open for the use of any person for a bona fide
dessscriptive or trading purposes and that the appellant should not get monopoly right over this
word. In my view, these are valid grounds for exercising the discretion vested in the Registrar

under S. 18(4) of the Act, against the registration of the appellant’s trade mark and I do not see
any justification for interfering with the discretion of the learned Assistant Registrar.
In the result, the appeal is dismissed, but there shall be no order as to costs.

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