Pondicherry Textile Corporation Limited vs Assistant Registrar Of Trade Marks

Dr. Raghbir Singh, J

These are three appeals against three orders all dated 17th September, 2002 passed by the Assistant Registrar of Trade Marks, Chennai refusing

registration of the trade mark 'Anglo French textiles' filed by the applicants under trade mark applications No. 557503 in class 23 in respect of yarns of

all kinds, application No. 557504 in class 24 in respect of fabrics and textile piece goods of all kinds and application No. 557505 in class 25 in respect

of readymade garments of all kinds claiming continuous user since 1.1.1989 in all the cases. The applications had been filed on 30th August 1991. The

appellants/applicants had filed three appeals namely TMA 1-3/2003 under section 109(2) of the Act in the Hon'ble High Court of Madras on 13th

December 2002 which have been transferred to this Board under section 100 of the Trade Marks Act, 1999.

The Assistant Registrar of Trade Marks by his order dated 17th September 2002 has refused the applications under Section 9 of the Trade and

Merchandise Marks Act, 1958 (hereinafter referred to as the Act) in all the three cases. On an application of the appellant in Form TM 15 dated 1st

October 2002, the Assistant Registrar of Trade Marks vide his order dated 17th March 2003 had given the grounds for his decision taken by him for

refusing all the cases.

The learned Assistant Registrar with a view to elaborate the meaning of expression 'Anglo French Textiles' had tried to take help from the

dictionary meanings of the expression 'Anglo French' which means - relating to England and France or the people of two countries. He concluded that

as the expression is being used as a trade mark in respect of ""yarns"", ""textile piece goods"" and ""readymade garments"", obviously, it has geographical

significance and it would indicate that the goods are manufactured in that place. Thereby he concluded that the expression relates to a territory and

hence not registrable as the expression indicates that the goods are originating from England and France.

The appeals came up for hearing before the Intellectual Property Appellate Board (IPAB) on 30th December 2003, Shri A.A. Mohan, Advocate

appeared for the appellants. None appeared for the respondents.

The learned counsel for the appellant made similar submissions in respect of all three appeals and contended that the peculiar combination of the

words 'Anglo' and 'French' have become distinctive in relation to the business of the appellant and by virtue of long and continuous use, the said trade

mark has acquired secondary meaning among the trade and public. He contended that the trade mark 'Anglo French' is not likely to lead to any

confusion and is not indicative of the place of manufacture or sale of the appellant's goods. He further submitted that they have disclaimed exclusive

rights in the word 'textiles' as directed by the Registrar in his examination report. The word 'Anglo French' is a unique combination coined by the

appellant and there is no country called 'Anglo French'. He further claimed that the appellants have continuously and exclusively used the trade mark

'Anglo French' since the year 1987.

The decision of the learned Assistant Registrar of Trade Marks dated 17th September 2002, which was followed by his detailed order dated 17th

March, 2003 mentioning the grounds for his decision, which refers to section 9(1)(d), rejecting the registration of the trade mark is exclusively based

upon the fact that the expression 'Anglo French' is a geographical name and as such registration thereof is not permissible under section 9(1)(d) of the

Act. The Assistant Registrar has erred in interpreting the expression 'Anglo French' as something belonging to England and France and further being

indicative of the goods originating from England and France. 'Anglo French' is an expression which has been coined as a distinctive expression having

no nexus in its ordinary signification to a geographical name. It is the duty of the Assistant Registrar to consider whether from the trade mark any

ordinary person would come to the conclusion that the goods are manufactured from a particular place. Again the Assistant Registrar must ensure

that the territory which is forbidden for being used for the purpose of registration must be an identifiable and specific territory with a locational

situation. The expression 'Anglo French' is a hybrid expression that appears to have been coined out of two distinctive entities, i.e. something

ambiguously and vaguely and with no definitiveness relating to England or to English society and similarly to France or French society. So is the

position with respect to the expression like Indo-German etc.

Where the mark consists of a compound appellation including a geographical name, it may be registered upon evidence of distinctiveness

(Narayanan-The Law of Trade Marks and Passing Off, fifth edition p. 181).

Generally a geographical name cannot function as a trade mark as it is descriptive of the place of manufacture, more so, if the place is famous for

the manufacture of such goods, for example, 'SWISS' for watches.

Although a geographical name or a word indicating geographical origin is not prima facie capable of distinguishing it may be considered for

registration upon evidence of acquired distinctive character. A geographical name can only be prima facie capable of distinguishing the goods of a

person from those of others when he can visualise of it that it is such a name as it would never occur to others to use as a trade mark in respect of

their goods. In the present case, the mark 'Anglo French' is such a name that it would never occur to any person to use it as a trade mark.

Furthermore, it does not relate to any particular city or place. Also the applicants have filed evidence of use of the mark from 1987 and they have

disclaimed the word 'textiles'. In view of the above, we are of the opinion that the trade mark 'Anglo French' could be registered. Accordingly, the

impugned orders of the Assistant Registrar of Trade Marks dated 17th September, 2002 in all the three cases, are set aside and the matter is

remanded to the Trade Mark Registry, Chennai for further action.