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Judgment
S. Usha, J
The Original Rectification Application has been filed for removal/cancellation of the trade mark Singh, Singh Mehandi Industries registered under
No. 1171825 in class 3 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
The applicant is a leading manufacturer of Mehandi powder & cone and carrying on business since 1997. Initially, the applicants were working for
others and were selling the powder in loose. In the year 2001, the applicants started to carry on the business under the trade mark ""Raju Singh"". Over
a period of time, the applicants' trade mark had gained enormous reputation owing to the tremendous quality of the applicants' products. The
customers refer to and ask for ""Raju Singh Mehandi"". The respondent had approached the applicant to buy the brand ""Raju Singh"" which was refused
to by the applicant. The 1st respondent immediately started using a new brand name ""Ragu Singh"". The 1st respondent having failed to compete with
the quality and price of the applicants' goods had initiated legal action against the applicant.
3 . The applicants belong to the Rajput community, which is traditionally known for using Mehandi. Gradually, the Rajput community was considered
as experts in preparation of Mehandi as they had perfected the art of making the right mixture to produce a dark red colour which ladies being
considered aesthetic and is also thought to be auspicious. In 1997, the applicants started selling Mehandi in a small way, but as there was a good
response for their products from the public, the applicants started using the same in a commercial scale.
4 . ""Singh"" is the applicants' surname & family name for centuries. The applicants' son's name is ""Raju Singh"" and therefore had it as the trade mark.
Apart from the applicants' son's name it also projected his community name which is well known for its expertise in formulating Mehandi paste.
5 . On 01.01.2003, the 1st respondent issued a cease and dissect notice to the applicant from using the trade mark ""Singh Mehandi Industries"". On
09.01.2003, the applicant sent a reply to the same. Thereafter, the 1st respondent had taken an affidavit by force from the applicants that he would not
use the trade mark and if used would pay damages. The affidavit was in English language which language was not known to the applicant, which is a
proof to say that the affidavit was singed by the applicant by force. On 28.01.2003, the applicant issued a notice stating that the affidavit was obtained
by fraud. The 1st respondent did not reply to the same. Thereafter the applicant and the 1st respondent was carrying on their business peacefully.
6 . In February 2004, the 1st respondent filed a suit before the City Civil Court, Bangalore in C.S. No. 822 of 2004 and obtained an ex-parte interim
order and is being contested. It is pertinent to note that after an year, the 1st respondent had filed the suit only to harass the applicant. The 1st
respondent had acquiesced the applicants' use of the trade mark ""Raju Singh"".
7 . The applicants then came to know that the 1st respondent has applied for registration of the impugned trade mark ""Singh, Singh Mehandi
Industries"". The word ""Singh"" is incapable of registration as it is not distinctive. ""Singh"" is a surname which is very common in India. It represents a
sect/community and therefore not capable of acquiring distinctiveness. The mark ""Singh"" along with the artistic work was refused registration under
No. 1263734 in class 3. Subsequently, the 1st respondent has filed this impugned trade mark application and obtained registration. The 1st respondent
based on this registration initiated a Suit C.S. No. 399 of 2007 before the Hon'ble High Court of Madras and obtained an interim order of injunction
against the applicant. The applicant is therefore an aggrieved person as the 1st respondent has filed a suit C.S. No. 399 of 2007 against the applicant.
The applicant is a person aggrieved as he is carrying on business in the same class and also that the applicant is also carrying on business in the name
of ""Raju Singh"".
8 . The 1st respondent instituted a false complaint under Sections 103 & 104 of the Act against the applicant. In this connection, the Central Crime
Branch sought for an opinion from the Registrar of Trade Marks and the Registrar opined that the use of ""Raju Singh"" is honest and bonafide in
relation to the goods ""Mehandi"" at the time of adoption of personal name as trade mark. The 1st respondent is preventing other traders from using
their personal name on the basis of this impugned registration which is liable to be revoked.
9 . The 1st respondent has obtained this registration by playing fraud and by suppressing the fact that the earlier application for registration of the mark
Singh"" word per se was refused registration, for which reason the trade mark ought to be removed. The registration is opposed under Section 9(1)(a)
of the Act. The impugned trade mark ""Singh, Singh Mehandi Industries"" is common to trade and is being used by several other traders even before the
1st respondent could adopt the trade mark and therefore cannot claim to be the proprietor of the trade mark under Section 18(1) of the Act.
The impugned registration is in violation of the provisions of Sections 9, 11, 12,
13 and 18 of the Act. The trade mark is wrongly remaining on the register without sufficient cause.
11 . The 1st respondent filed the counter statement stating that the application is motivated by bad faith, vexatious and a deliberate abuse of process of
law for securing unlawful gains. The applicant is an infringer of 1st respondent's prior adopted trade mark and has been restrained from using the
identical and deceptively similar trade mark. The 1st respondent had also stated that various proceedings were initiated against the applicant and the
same are pending.
The 1st respondent is the pioneer in the manufacture and marketing of branded Mehandi products including Mehandi Cones, Pastes and Powders.
They commenced the business under the trade mark ""SINGH"" in the year 1997. They are the first, true and original adopters of the trade mark in
relation to Mehandi products. They are the proprietors of the trade mark under No. 1171825 in class 3 in respect of Mehandi, Kum Kum and
cosmetics.
The impugned trade mark consists of the 1st respondent's trading style and the trade mark. The 1st respondent has invested an enormous sum of
money in the advertisement and promotion of the trade mark. They have adopted, used and promoted the impugned trade mark in order to distinguish
their goods from those of others. The present application is motivated by bad faith and dishonesty.
The impugned trade mark is distinct and valid and deserves to remain on the register. The other averments and allegations made in the application
for rectification were denied by the 1st respondent in his counter statement.
1 5 . We have heard Shri Akhil R. Bansali, counsel for the applicants and Shri Sivaraman Vaidyanathan, counsel for the 1st respondent.
The Learned Counsel for the applicant Shri Akhil R. Bhansali submitted that the trade mark ""Singh, Singh Mehandi Industries"" has not acquired
secondary meaning. The applicant had adopted the trade mark ""Raju Singh"" after the applicant's son's name. They adopted the trade mark ""Raju
Singh"" in the year 2001, when the applicant made an application for registration of the trade mark ""Raju Singh"", the same was opposed by the 1st
respondent. Subsequently by force and coercion the applicant was made to sign an affidavit of undertaking not to use the trade mark ""Singh"". The
applicant does not know the English language and only signs in Hindi is a proof to say that the applicant's signature was obtained by fraud. In the year
2004, the 1st respondent filed a suit based on this affidavit of undertaking only to harass the applicant and obtained an order of injunction.
1 7 . The applicant filed a suit against the 1st respondent and the same was dismissed. The 1st respondent filed an earlier application for registration of
the mark ""Singh"" which was refused to by the Registrar. The counsel then relied on the opinion given by the Registrar of Trade Marks in a criminal
complaint by the 1st respondent against the applicant at page 87 of the documents filed along with the application for rectification. The Registrar has
stated that ""Therefore the main question will be whether the name ""Singh"" will be termed as a 'trade mark'. The word ""Singh"" means warrior and
therefore all Rajputs, Punjabis and others who are living in the Northern States used to adopt the said name as suffix to their respective personal
names. Hence, the name Singh is considered to be a family surname. All the accused hailed from Rajput community are like that of complainant
Manohar Singh and whoever named their son with a joining of word ""Singh"" thereby the adoption of the personal name as trade mark such as 'Raju
Singh', Ram Singh, K.P. Singh, Veeru Singh, Sugam Singh, Sher Sing etc. are honest and bonafide in relation to goods 'Mehandi Powder and Mehandi
Cone' on the line of adoption of personal name as trade mark. Hence in my point of view that nobody could claim exclusive right over the family
surname 'Singh'. This is clear from the wording of section of the Trade Marks Act, 1999. Therefore in my opinion that the question of deceptive
similarity in relation to a family surname 'Singh' could not be determined as it is a common family surname to all the people belonging to a particular
community or as per section 35 of the Trade Marks Act.
The applicant then submitted that the sales figures given by the 1st respondent are only from the year 2000 though they claim user since 1997. The
sales figures furnished at page 73 of the documents along with the counter statement cannot said to be a valid document as it has no signature of the
1st respondent or has been certified by a Chartered Accountant.
The applicant had adopted the trade mark ""Raju Singh"" because of his son whose name is ""Raju"" whereas the 1st respondent has given no reason
for the adoption of ""Raghu Singh"". The counsel then referred to Section 17 of the Act. The counsel also submitted that the 1st respondent is not clear
as to the date of user as in one place they claim to be using since 1997, in another it is stated to be from 2000 and in another 2003. thee are therefore
different dates given.
The applicant relied on the judgment reported in 2002 (24) PTC 177 (Del) (Allianz Aktiengesellschaft Holding Vs. Allianz Capital & Management
Services Ltd.) in support of his contention that the trade mark ""Singh"" has not acquired secondary meaning. A trade mark is said to have acquired
secondary meaning only by extensive use. In this case, the trade mark ""Singh"" has not acquired secondary meaning as it has not been extensively used
for long. The other judgments were AIR 1955 SC 558 (The Registrar of Trade Marks Vs Ashok Chandra Rakhit Ltd.) and 2009 (40) PTC393 (Del)
(Goenka Institute of Education and Research Vs. Anjani Kumar Goenka and Anr.).
2 1 . In reply to the arguments of the applicants' counsel, Mr. Sivaraman Vaidyanathan, counsel for the 1st respondent submitted that the applicant's
counsel had relied on a Kolkata registration as the 1st respondent failed before the Chennai Registry is not pleaded and so cannot be submitted now.
The counsel then submitted that the registration was not in violation of Section 9 of the Act. As the applicants were restrained by an order of
injunction, they cannot be a person aggrieved to file an application for rectification under Section 57 of the Act. He relied on the definition of trade
mark under Section 2(m) of the Act.
The counsel then submitted that the impugned trade mark was used since 2000 and the application was filed in the year 2003. The counsel then
relied on a few judgments viz.,
• MANU/1C/0028/2008 (Nitin P. Jain and Ors., Preeti Marketing Vs. Titan Industries Limited)
• MANU/IC/0040/2008 (Hassan Bricks Field Vs. Shri Faim Khan, Trading as Khan Brick Works)
• MANU/IC/0042/2008 (Smt. Radhika Trading as Radhika Chemical Works Vs. Shri Satish Kumar Lamba Trading as Satish Soap Mills and The
Registrar of Trade Marks, Trade Marks Registry)
• MANU/DE/0658/2004 (Dr. Reddy's Laboratories Ltd. Vs. Reddy Pharmaceuticals Limited)
• MANU/MH/0333/1988 (Bajaj Electricals Limited Vs. Metals & Allied Products and Anr.)
• MANU/IC/0003/2011 (Shyam Traders Vs. Spatial Commercial (P) Ltd)
• MANU/IC/0041/2005 (Palta Engineering Works Vs. Dewan Rubber Industries, Dewan Rubber Industries Limited and The Registrar of Trade
Marks)
We have heard and considered the arguments of the Learned Counsel and have gone through the pleadings and documents.
24 . The application for rectification has necessarily to be filed by an aggrieved person alone. The term Aggrieved Person though has not been defined
in the Act, it has to be liberally construed. A person in the same trade with a deceptively similar trade mark is said to be a person aggrieved. In the
instant case, the 1st respondent has filed a civil suit against the applicant and has restrained the applicant by an order of interim injunction from his
using the trade mark ""Raju Singh"". The applicant is therefore a person aggrieved and has a locus standi to file this application for rectification.
25 . The other issue would be to consider whether the trade mark ""Singh"" which represents a sect/community can be said to be distinctive to be
registered. A surname as a personal name is not said to be distinctive of the goods of one person. The trade mark ""Singh"" is used along with ones
personal name and every trader has a right to use his name in trade.
On the commentary of Law of Trade Marks and Passing Off by P. Narayanan Sixth Edition at para 8.20, it is read as under:
8 .20 Surnames are commonly used as trade marks. Although it is not specifically mentioned in the definition of marks, the word name would include
surname and personal name.
The right to use surname that a man uses said Nevilla. J. is shared with every other person who has the same name, and consequently, he has got
about as much monopoly in it as he has in the air that he breathes, he has to share it in common with all his fellow citizens.
The above statements are being considered while dealing with the issue whether a surname is registerable in the instant case. We are of the view
that the trade mark ""Singh"" which is a surname cannot be adapted to distinguish and capable of distinguishing the goods of all persons. The mark in
general is said to be distinctive only by long use. In this case, the use of the mark is very short. The mark ""Singh"" is adapted to identify all persons of
that community. The impugned trade mark ""Singh"" is therefore not distinctive and does not qualify to be registered.
2 8 . The 1st respondent has not denied the fact that the Registrar had refused registration for the trade mark ""Singh"" along with the artistic mark. The
documents filed by the 1st respondent like the bills, invoices also do not bear the trade mark ""Singh"" alone, the trading style ""Singh Mehandi Industries
is seen in the invoices which is of the year 2000 and not earlier to that. The mark therefore cannot be said to have acquired distinctiveness by use.
The goods for which the mark is used and also the class of customers are to be taken into consideration. The goods are cosmetics which is being
used by all classes of people. The 1st respondent cannot claim any monopoly of the word ""Singh"" and deprive all individuals from using the word
Singh"" as it is a common word used along with a person's name. In 1894 (11) RPC P4 in William Powell vs. Birmingham Vinegar Brewery Company
it was held in regard to the mark ""Yorkshire Relish"" as follows:-
Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade
mark, if remaining on the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register
he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi, to
be heard as a person aggrieved.
By the same nature, if the word ""Singh"" is retained/continued in the register, the rights of any person who desires to use the word ""Singh"" which is the
name of a sect would be limited. Therefore, the said mark must be removed.
For the above mentioned reasons, we are of the opinion that the impugned trade mark registered under No. 1171825 in class 3 deserves to be
removed from the Register. Accordingly, the application for rectification is allowed with a direction to the Registrar for necessary action.