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Judgment
S. Usha, J
The original appeal arising from the order dated 09.11.2006 passed by the Deputy Registrar of Trade Marks allowing the opposition No. KOL-
200894 and refusing registration No. 1128064 in Class 30, under the provisions of the Trade Marks Act, 1999. The appellant herein filed an application
for registration of the trade mark SNAX under No. 1128064 in class 30 on 22.08.2002. They claimed user since 01.04.1965. The said application was
advertised before acceptance in the Trade Marks Journal No. 1328 Supp (2) dated 14.02.2005 at page 2621.
The respondents herein opposed the registration of the impugned trade mark on various grounds. The appellant herein filed their counter statement.
On completion of the pleadings, the respondent No. 2 herein passed the impugned order. The learned Registrar held that the word SNAX is not only
phonetically equivalent but also visually and structurally equivalent to the English word Snacks. The word snacks means ""a light, casual or a hurried
meal, a small amount of food eaten between meals."" The word snacks is a descriptive term and the question arises as to whether the impugned mark
which is undoubtedly a variant of this dictionary word can be registered as a trade mark or not.
In 1958 RPC 175 (Electrix Case) it was held that, ""if a word in its proper spelling is directly descriptive, it is to be so considered even if it is
misspelled, for any phonetic equivalent of an unregistrable word is itself unregistrable.
In the book by Mc Carthy on Trade Marks and Unfair Competition, it was held that ""No manufacturer can take out of the language a word even a
slang term, that has generic meaning as to a category of product and appropriate it for its own trade mark use. A seller cannot latch on to the name of
an article merely by use, claim it to be his own trade mark for that article. For e.g. One seller cannot claim Floor-Tile is a mark for floor tile, that Al-
Kol is a mark for alcohol.
A generic word or expression cannot form to be a subject of trade mark registration. Whatever evidence was filed was for the trade mark
Britannia Snax and not for the word Snax exclusively. The trade mark Snax is phonetically equivalent to the word Snacks which is directly
characteristic of the goods in question and cannot be monopolized by any one as the same shall be required by other legitimate traders to describe their
products in the course of trade.
The counsel for the applicant (appellant herein) stated that the word Snax was not disclaimed in their earlier registration under No. 344764 in class
It may be stated that the registration was granted for the trade mark as a composite mark.
A descriptive trade mark cannot attain distinctiveness whatever be the amount or duration of use. A descriptive word shall always be known as
descriptive and shall always carry the same impression in the mind of the purchaser of the concerned goods.
The impugned trade mark does not qualify for registration as per Section 9(1)(a) and 9(1)(b) of the Act. In a descriptive trade mark no one can
claim proprietary right and therefore objection under section 18(1) also sustain.
Aggrieved by the said order, the appellants filed this appeal. The appellants stated that they are engaged in the manufacture and sale of biscuits,
breads, buns etc. They are registered proprietors of various trade marks. The trade mark Britannia is a household mark and is a well known trade
mark. The trade mark SNAX is also a well known mark honestly conceived and adopted in the year 1965. The mark has been in use for more than 40
years.
The appellants are the registered proprietors of the trade mark Britannia Snax under No. 344764 in class 30 as of 12.01.1979. On account of long
and continuous use, the trade mark Snax has acquired distinctiveness. The mark has acquired a secondary meaning.
The appellants trade mark Snax is a coined term and is inherently distinctive.
The respondent No. 2 failed to appreciate the fact that the trade mark Snax is not the word Snacks. Snax is not a dictionary word. It is an
expression which was honestly conceived and adopted by the appellant. The Registrar failed to consider the copyright registration. The word Snax is
not disclaimed in all the registrations.
The respondent No. 1 herein filed their counter statement to the appeal. The respondent is one of the largest and best known manufacturer and
distributor of soft drink beverages and other products. The impugned trade mark Snax is nothing but a variant of the common English word snacks
referring to food eaten between meals, light edible articles.
The word Snax is a dictionary word, genuine & common to goods and thus devoid of distinctive character and is not capable of distinguishing the
goods of the appellants from those of others; hence prohibited under Section 9(1)(a) of the Act.
In the other applications a disclaimer condition was imposed for the word Snax as no monopoly could be given to the appellant for the trade mark
SNAX.
We heard Ms. Sumitra Chowdhury, learned counsel for the appellant and Shri Debnath Ghosh, learned counsel for the respondent during the
Circuit Bench Sitting held at Kolkata on 10.06.2013.
The learned counsel for the appellant submitted that they are the first to have adopted and used the trade mark Snax. By virtue of long use and
widespread promoted activities the appellants mark SNAX has acquired exclusive right over the trade mark Snax.
Disclaimer condition imposed while granting registration is never revealed in the market as it is only procedural matter. Thus, disclaimer imposed in
other registration is not an issue while granting registration of this trade mark. The various other registrations granted stand as special circumstances
for grant of this registration.
The appellant had submitted substantial evidences of prior adoption and extensive use atleast since 1970s. There is no evidence to show that
SNAX is a variant of the word Snacks. It is only the appellant who had adopted and used the invented word Snax.
The trade mark SNAX is a well known trade mark. The mark has acquired a secondary distinctiveness through use. There was no reason for the
respondent to file this opposition.
The judgments relied on by the appellants.
Agar Distributors and Shri Siraj Amirali Soorani Vs. IPAB, Lakh Enterprises and Juzer M. Lakhwala-IPAB is empowered to take additional
documents on record as per the provisions of Order 41 Rule 27 of the Code or Civil Procedure.
AIR 1996 Delhi 144-Chhattar Extractions Ltd. Vs. Kochar Oil Mills Ltd.-Rights of the Prior user is to be protected.
Globe Super Parts vs. Blue Super Flame Industries-Supreflame
1997(2) ARBLR 559 Delhi-Godfrey Phillips India Ltd. Vs. Girnar Food & Beverages Pvt. Ltd.-Super Cup Tea
2004 (29) PTC 477 (IPAB)-Hanuman Mal choradia Vs. F.W. Woolworth Co. & Anr.-Woolworth
In all these matters, the marks were allowed to be registered even though they were descriptive.
The learned counsel for the respondent submitted that the word Snax has been disclaimed in all the other registrations and therefore cannot be
granted registration as a separate word. The word Snax is descriptive of the goods for which it is being used.
A genuine name of a product can never function as a trade mark. A genuine term cannot become a trade mark merely by acquisition of secondary
meaning. No amount of evidence of secondary evidence would even convert the term into a trade mark.
Judgments relied on by the respondents -
305 US 111 (US Supreme Court)-Kellogg Co. Vs. National Biscuit Co.-Shredded Wheat-since the term is generic, the original maker has no
exclusive right to use it.
537 F. 2d 4(1976)-Abercrombie & Fitch Company Vs. Hunting world, Incorporated-a generic term cannot be termed to be a trade mark even if
there is proof of secondary meaning.
1995 (15) PTC 384-Rupee Gains Tele-Times Private Ltd. Vs. Rupee Times-Rupee is a generic term-there cannot be any trade mark in the word.
1996 (16) PTC 124-Competition Review (P) Ltd. Vs. N.N. Ojha-Competition Review-Competition is generic, no trade mark protection for generic
terms.
85 (2000) DLT 733-Online India Capital Co. Pvt. Ltd. & Anr. Vs. Dimension Corporate-Office cleaning case-Use of the descriptive mark for 26
years cannot be considered sufficient for restraining the defendant for using the trade mark.
174 (2010) Delhi Law Times 279 (DB)-Marico Limited Vs. Agro Tech Foods Limited-Part tweaking of a descriptive words cannot be held to be
coined.
The word SNAX is disclaimed as it has direct reference to the goods. In rejoinder, the counsel for the appellant submitted that the trade mark herein
has to be considered on its own facts and to state that in the other registration disclaimer conditions were imposed is not correct. The trade mark Snax
is a fanciful adoption.
The judgment relied on by the appellant USPQ is not binding on the appellants.
We have heard and carefully considered the arguments of both the counsel and have gone through the pleadings and documents.
The issue that arises for consideration is that to see and decide whether the word SNAX is descriptive and if descriptive can it be granted
registration. The goods are falling in Class 30 in respect of biscuits, breads, buns etc.
The trade mark SNAX is phonetically similar to the word Snacks. Snacks means some light food. When a trade mark has a direct reference to the
quality of the goods for which registration is sought for, such mark shall not be granted.
The learned Registrar has rightly observed in the impugned order, ""Here the word SNAX which is a phonetic equivalent to the dictionary word
Snacks is directly characteristic of the goods in question and cannot be monopolized by any one as the same shall be required by other legitimate
traders to describe their products in the course of trade.
The word which has a direct reference to the character or quality of the goods it may be difficult to establish that it has lost its primary
significance and has acquired a distinctive character.
The appellants other registrations are not for the word SNAX alone it is always with their house mark Britannia. The label mark is also with the
Britannia mark prominently given. The registration for the other marks have been granted with the disclaimer contention.
The appellants other contention that the other registration is a special circumstance to grant registration does not hold good as each registration has
to be looked into on the facts and the circumstance. Therefore, the mark Snax stand alone does not qualify for registration. For the reasons stated
above, we do not think it necessary to interfere in the orders of the Deputy Registrar. The appeal is accordingly dismissed with a costs of Rs. 5000/-.