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Judgment
Prabha Sridevan, J
These Appeals are filed against the order, dismissing the Opposition filed by the appellant herein and ordering the registration of the marks as
detailed below for the Cycle Brand Three in One agarbathis.
O.A. No. 33 of 2009
Application No. 540605 - Opposition No. MAS-51640
Application No. 540606 - Opposition No. MAS-51639
Application No. 540607 - Opposition No. MAS-51638
Application No. 544494 - Opposition No. MAS-51642
O.A. No. 34 of 2009
Application No. 540603 - Opposition No. MAS-51648
Application No. 540605 - Opposition No. MAS-51647
Application No. 540606 - Opposition No. MAS-51643
Application No. 540608 - Opposition No. MAS-51644
O.A. No. 35 of 2009
Application No. 540598 - Opposition No. MAS-58033
Application No. 540602 - Opposition No. MAS-58034
Application No. 540600 - Opposition No. MAS-58035
Application No. 540599 - Opposition No. MAS-58036
Application No. 540601 - Opposition No. MAS-58037
Application No. 540604 - Opposition No. MAS-51645
Application No. 540607 - Opposition No. MAS-51646
Application No. 540609 - Opposition No. MAS-51649
Application No. 544494 - Opposition No. MAS-51772
The respondent's Trademark ""Three in One"" was advertised in different languages in 1997, without association with any other mark, claiming user
from 3.7.1987. Trademark No. 544494 advertised a month later. In English language, in association with the earlier mark 426521. The appellant herein
raised the issue of registrability of the mark ""Three in One"". The grounds raised are under Section 9, 11 and 18 of the Trade and Merchandise Marks
Act, 1958 (hereinafter referred to as 'the Act'). The learned counsel for the appellant submitted that the mark is not only descriptive, but also generic.
According to the learned counsel, the respondent is not using the words ""Three in One"" independently, but along with other words as ""Cycle Brand
Three in One"". The learned counsel submitted that using ""Three in One"" means three types of agarbathis are packed in one carton and this is
commonly used with relation to agarbathis as ""Two in One"" or ""Three in One"" or ""Four in One"". These are several incense cartons belonging to
different proprietors, which will establish this fact. The respondent's mark is one such type and it is Cycle Brand Three in One. But, they are trying to
monopolize the words ""Three in one"" which is oppressive and it cannot be stretched beyond limit. The respondent cannot have monopoly over these
words. The result of the registration of Three in One would be that no one can use these words to describe their goods, even when they put agarbathis
of three different fragrances in one packet. The learned counsel submitted that the mark is barred under Section 9 of the Act. The learned counsel
submitted that all the applications in various languages are highly descriptive and common to the trade. The learned counsel submitted that the
impugned orders should be set aside. The learned counsel referred to the order of this Board in the case of (Shalimar Agarbatti Company Vs. N.
Rango Rao & Sons) reported in MANU/IC/0002/2004Â : 2004 (29) PTC 247 (IPAB). That was a case, where the applicant Shalimar sought to
remove the mark belonging to the respondent Cycle Brand ""Three in One"". Before this Board in that case, the respondent herein had submitted that he
had been using the said trademark for nearly two decades, without asserting any exclusive right in respect of the words ""Three in One"". The learned
counsel further submitted that after having obtained favourable orders on the basis that he has not asserted any exclusive right in respect of the words
Three in one"", the respondent cannot be allowed to circumvent that judgment, by applying for registration of the mark ""Three in One"", as it would
amount to travesty of justice. The learned counsel submitted that in Para No. 14 of the counter statement in O.A. No. 70 of 2009, which is heard
along with this appeal, in Para No. 24, this specific ground has been taken. The respondents had replied to the above para by stating that, that order
passed in respect of registration of agarbathis carton containing the words Cycle Brand Three in one was in respect of a peculiar colour scheme. But
this application is for the registration of the trademark ""Three in One"" words per se in different languages and therefore, the earlier order will not
prevent the respondent from filing a separate application for registration of the trademark ""Three in One"". The learned counsel submitted that this is
nothing but rank dishonesty. The fact that there is a turnover of several crores of rupees will not make the descriptive mark to have distinguishing
feature or become distinctive. Before the Bench which heard the matter in MANU/IC/0002/2004Â : 2004 (29) PTC 247 (IPAB) (cited supra), the
appellant had brought to the notice of the Board that the present applications had been filed by the respondent.
The learned Senior Counsel for the respondent submitted that the statement before the Board was made in a different context. The respondent has
a huge turnover, for which, evidence had been produced before the Registrar. They had also applied for registration under the Copyrights Act in A-
52016 and A-520662, 52621 of 1992. The learned Senior Counsel submitted that the previous case would not bind the Registrar in the present case.
The appellant Shalimar Agarbathi Company had accepted the order passed by the Board and the order had become final. No evidence had been filed
to prove their case. After allowing the order to become final, the appellant cannot raise the same issue. He prayed that the appeal must be dismissed.
In reply, learned counsel for the appellant submitted that under Copyrights Act, registration is for the independent label and not for the words per se.
Voluminous documents have been produced to show the sales, users, etc., The appellant had also produced several copies of agarbathi carton to
show that the words ""Three in One"" and ""Four in One"" are common to the trade and are used to describe the goods. O.A. Nos. 33 to 35 of 2009 and
O.A. Nos. 72 to 82 of 2009, all are dealing with the same issue, viz., registrability of the mark ""Three in One"". Therefore, we allowed the counsel to
refer to the evidence filed in the appeals in common to establish their case. The learned counsel for the appellant referred to 1899 AC 226 at 229.
But, we do not need to look at any other documents, as the judgment of this Board rendered in Shalimar Agarbathi's case really concludes the case.
Shalimar Agarbathi is a manufacturer and trader in agarbathis and had been using various trademarks, like Shalimar Three in one, Kunal ""Three in
one"" etc. When the respondent herein secured the registration of the mark Three in One in 426521, the appellant Shalimar, apprehending legal action
had filed the rectification application. The respondent had contended that there had been manufacturing and selling the incense sticks from 1981 and
their sales turnover was huge and they had registered the mark in other Countries. The respondent had stated in the Shalimar case that as regards the
words ""Three in One"", a disclaimer had been imposed. The counsel for the Shalimar Agarbathi had admitted in that case that the mark that was
registered was Cycle Brand Three in One. His objection was to the registration of the words ""Three in One"". This Board in that judgment noted that
the prime grievance of the applicant was that the words ""Three in One"" had been registered along with the words ""Cycle Brand"" and that the
respondent claimed exclusive right to the words ""Three in One"". In the advertisement of the trademark in that case, there was a specific disclaimer
originally for the specific words including the words ""Three in One"". Thereafter, the disclaimer was corrected and the words ""Three in One"" removed
from the disclaimer. The Board noted ""it is clear that the registration of the first respondent trademark is made as 'Three in One'. The first respondent
submitted before the Board that no one had been cautioned in respect of the use of these words. The Board had further noted the respondent has
been using the said trademark ""Three in One"" for nearly two decades without asserting any exclusive right in respect of the words ""Three in One"".
The Board was of the opinion that no one had faced any legal threat for using these words and there was no cause of action for filing the application.
When we consider the submissions made by the learned counsel for the first respondent that the first respondent has been in the trade for more than
two decades using the same registered mark ""CYCLE BRAND THREE IN ONE"" and the applicant and also the other manufacturers did not face
any exclusive claim by the first respondent, we are of the view that the applicant cannot be considered to be an aggrieved person at this stage when
his rights has not been affected so far. Further, it is clear that registered trademark of the first respondent is ""CYCLE BRAND THREE IN ONE"".
As rightly pointed out by the learned counsel for the first respondent, the first respondent is entitled to safeguard his registered trademark in a
combined colour scheme, the device used on the carton along with the device and the mark. When that be so, there is absolutely no merit in the
present application.
It is clear from that order that the respondent had represented to the Board that his mark was only ""Cycle Brand Three in One"". He had not
asserted any right in respect of the Words ""Three in One"" exclusively. Having obtained a favourable order on the basis of the submissions made to a
Judicial Authority that the mark that he was asserting his right were only Cycle Brand Three in One. it is now not open to the respondent to retract
from that position and proceed on a different footing. It is clear from a reading of the earlier Shalimar Agarbathi's case that the appellant's
apprehension was that he would be prevented from using the words ""Three in One"" and that was the specific case. Had the respondent then
contended before the Board that they were entitled to use the words ""Cycle Brand Three in One"" as a whole and to use ""Three in One"" separately as
exclusive trademark, the Board might have decided otherwise. We see from para No. 12 of the said order that the Board had noted that the
respondent had been using the words ""Three in One"" without asserting any exclusive right. Therefore, the respondent had clearly convinced the Board
earlier that this apprehension relating to use of the words ""Three in One"" was misplaced, since they had no intention of ascertaining exclusive right to
those words. They had also submitted before the Board that no one else, except the appellant, who was Shalimar had objected to the registration.
Now, the same appellant has filed O.A. Nos. 70 to 82 of 2009 and three other parties, who are using the words ""Three in One"" have filed O.A. Nos.
33 to 35 of 2009. It is, therefore, clear that one cannot give the respondent exclusive right to use the words ""Three in One"" which are purely
descriptive of agarbathis' carton containing agarbathis of three different fragrances. It would also amount to allowing the respondent to abuse the
process of law. After practically conceding in the other case, before the Board on the earlier occasion held that the respondent had no intention to use
the words ""Three in One"" the application for registration of trademark of the words ""Three in One"" per se in English and other languages is a sheer
abuse.
The Registrar had totally failed to appreciate the fact that the words ""Three in One"" were descriptive. Before the Registrar, the Shalimar's case
was also brought to the notice, but the Registrar referred to it in just one line. ""Shalimar Agarbathis"" rectification application was dismissed and that it
has become final. The Registrar ought to have read the order. He would then have realised that there is a reason why the order was not challenged by
Shalimar. It had secured to Shalimar, the protection that it wanted, viz., that the respondent shall not have any exclusive right to the words ""Three in
one"". Having obtained that assurance from the respondent's own submission before the Board, there was no necessity for the appellant to challenge
the order. The respondent on the other hand had secured favourable order on the basis of an assurance before the Board and cannot be allowed to
retract the assurance that would put a premium on dishonesty. The words ""Three in one"" per se cannot be granted registration. These appeals are
allowed with costs of Rs. 5,000/- (Rupees Five Thousand only). For the reasons above, the impugned order is set aside. Consequently, the M.P. No.
112 of 2013 is closed.