AI Structured Summary
Not yet generated for this judgment
Judgment
Ramanujam, J.—These appeals raise an interesting question which is some what unusual, but by no means easy. Since both these appeals
are connected as having arisen between the same parties and out of the same rectification proceedings under the Trade and Merchandise Marks
Act, 1958, hereinafter referred to as the Act they are dealt with together.
The undisputed facts which gave rise to the said restriction proceedings may briefly be noticed. The Appellant herein is the registered proprietor
of two trade marks bearing Nos. 9951 and 170427 having registered them for manufactured tobacco occurring in class 34 of the Fourth Schedule
to the Trade and Merchandise Mark Rules, 1959 on December 23, 1942 and August 9, 1955 respectively. Trade Mark No. 9951 consisted of a
la(sic) with a device of Charminar and a word Charminar along with a monogram and trading style of the Appellant. Trade Mark No. 170427
consisted of a label with two panels each containing the words Viziar Deluxe and trading style of the Appellant and in addition while one panel
contains the device of Charminar in the middle the other panel contains a monogram in the middle. The said Trade Marks have become well-
known in the trade as the Appellant had been continuously and exclusively using the said Trade Marks in relation to cigarettes manufactured by
them since the date of their registration and they have come to be associated and identified in the minds of the public with the Appellant. From
August 23, 1973 the Respondent started manufacturing and selling Quiwam and Zarda adopting a trade mark consisting of the device of
Charminar and the expression charminar along with other designs and decoration depicted thereon. He applied for registrations of the said trade
mark, but in those applications the Appellant''s registered Marks Nos. 9961 and 170427 were shown as grounds of objection to the registration of
Respondent''s trade mark. Then on 29th September, 1973 the Respondent sought permission from the Appellant to use said the Trade Marks in
relation to chewing tobacco Quiwam and Zarda manufactured by it. The Appellant not only refused to give consent to the use of the Trade Mark
by the Respondent for chewing tobacco manufactured by it by its letter dated 8th October 1973 but also warned the Respondent that any use of
its trade marks will be an infringement of its rights. Thereafter the Respondent filed two applications MAS. 149 and 150 on 15th October 1973 for
rectification of the registration of the Appellant''s two Trade Marks Nos. 9951 and 170427. In M.A.S. No. 149 the Respondent prayed for
expunging or in the alternative limiting the registration of the Registered Trade Mark No. 9951 to manufactured tobacco other than Quiwam and
Zarda. In M.A.S. No. 150 the Respondent sought the expunging of or limiting registration of the Registered Trade Mark No. 170427 to
manufactured tobacco other than Quiwam and Zarda.
The rectification had been sought for by the Respondent mainly on the ground of non-user. The Respondent''s case was that the said two Trade
Marks had been registered without any bona-fide intention on the part of the Appellant to use the Marks in respect of Manufactured tobacco, that
in fact there had never been any use of the marks in relation to manufactured tobacco either prior to or after the date of registration, and that in any
event, up to a date of one month before the filing of the application for rectification a continuous period of more than five years had elapsed during
which there was no bona fide use of the impugned marks on manufactured tobacco. The Respondent also contended that both the impugned
registrations are bad in law due to vague and ambiguous designation of goods, that the device of Charminar appearing in both marks is a State
emblem of the erstwhile Nizam State and as such it is not registerable under the Act, that as a manufacturer and dealer in Quiwam and Zarda it
applied for registration of its trade marks in respect of those goods, that the impugned Trade Marks on the Appellant were cited as conflicting
since they stand registered for a broad designation of goods reading as manufactured tobacco and that, therefore, as an aggrieved person it is
entitled to file the two applications for rectification of the registration of the Appellant''s two Trade Marks.
The said applications were resisted by the Appellant on the ground that the Respondent is not an aggrieved person and as such it is not entitled
to maintain the two applications for rectification, that the device of Charminar is not the property of the erstwhile State of Nizam that Charminar is
a historical monument and as such it is registerable under the Act that the Trade Marks in question had been registered in respect of manufactured
tobacco including all goods unswerving to the description of manufactured tobacco that since the date of registration the Appellant has been
manufacturing cigarettes which fall within the entry manufactured tobacco specified in Class 34 and that, therefore, it cannot be contended that it
has not used the Trade Marks in respect of manufactured tobacco for which the Trade Marks had been registered. The Appellant''s further
contention was that even though Quiwam and Zarda are not manufactured by the Appellant, so long as they fall within the meaning of manufactured
tobacoo under class 34 in respect of which the Trade Marks in question had been registered, the Respondent cannot lawfully use the trade marks
in respect of Quiwam and Zarda admittedly answering the description of manufactured tobacco.
After considering the evidence adduced by both parties in the form of affidavits, the Assistant Registrar of Trade Marks, Madras gave a
personal hearing to the parties. After the conclusion of the hearing the Respondent filed an Interlocutory application on 24th July, 1976 seeking to
amend the alternative prayer as one for limiting the goods under the impugned registration to cigarettes instead of excluding Quiwam and Zarda
from the registration of manufactured tobacco as earlier prayed for. This was opposed by the Appellant. There was a further hearing on the said
amendment petition and at that stage as both the Counsel agreed that the proposed alternative prayer can be considered by the Registrar if
necessary under the general powers of rectification, the interlocutory petition may be dismissed. Accordingly the interlocutory petitions were
dismissed leaving the question of amendment of the alternative prayer open for consideration at the state of passing final orders. The Assistant
Registrar then passed final orders wherein he held that the Respondent who is the applicant for rectification of the Trade Marks is a person
aggrieved and, therefore it has locus standi to maintain the application for rectification. Having held the Respondent to be an aggrieved person,
Registrar proceeded to hold that the Appellant had no bona-fide intention to use the Trade Mark in relation to goods other than cigarettes and that
in fact the Appellant has not used its Trade Marks at any time since its registration to goods other than cigarettes and that, therefore, the
registration of the Trade Mark should be limited to Cigarettes alone. The said decision of the Registrar of Trade Marks has been challenged in
these appeals by the Appellant, the registered proprietor of the Marks which originally stood registered for manufactured tobacco but which has
now been restricted to cigarettes.
Though in the memorandum of grounds of appeal the finding of the Registrar that the Respondent is an aggrieved person had been questioned
by the Appellant, Mr. V.P. Raman, learned Counsel appearing for the Appellant did not seek to canvas that finding. We have to therefore proceed
on the basis that the Respondent is an aggrieved person and therefore, entitled to maintain an application for rectification of the Trade Marks in
question.
The learned Counsel, however, very vehemently contends that the Registrar was in error in holding that the Appellant had no bona fide intention
of using the Trade Marks in respect of manufactured tobacco for which registration has been obtained, ignoring the possibility of the Appellant
using the Trade Marks for other items of manufactured tobacco other than cigarettes, that manufactured tobacco being the article for which
registration has taken place and cigarettes being one of the forms of manufactured tobacco the Appellant should be taken to have used the Trade
Marks for manufactured tobacco and that, therefore, the Registrar was in error in restricting the registration of the Trade Marks to cigarettes only.
The learned Counsel for the Appellant contends that so long as cigarettes have not been shown as a separate article apart from manufactured
tobacco and the registration of the Trade Marks being only for manufactured tobacco under Class 34, the Registrar has no justification or
jurisdiction to cut up or subdivide the item manufactured tobacco referred to in Class 34 and to resisted the registration to an item which has not
been specified as a separate article for registration under any of the classes. According to the learned Counsel, even if the Appellant had applied
for registration of the Trade Marks in respect of cigarettes, registration is possible only in respect of manufactured tobacco as cigarette is not
treated as a separate item for the purpose of registration apart from manufactured tobacco and if the Registrar had no jurisdiction to register a
Trade Mark in respect of cigarettes which is not a specified item for registration, he cannot amend the existing registration which is in accordance
with the statutory classification limiting the registration to cigarettes which is not possible under the classification as it exists to-day.
As against this, Mr. B.R. Seshadri, learned Counsel for the Respondent contends that though the expression manufactured tobacco has been
used in Class 34, the registration of the Trade Mark cannot be made with reference to that generic term without reference to the articles
manufactured by the person, who seeks registration, that manufactured tobacco takes in not only cigarettes. but also cigars, beedies, chewing
tobacco, etc., that, therefore no registration of a trade mark for the generic term manufactured tobacco without the applicant''s actual intention to
use the trade mark in respect of all the goods that answer the description of manufactured tobacco can be made and that it is well-established that
a registration of trade mark can be made only in respect of an article dealt with by him and not in respect of an article which the applicant never
intends to deal with. According to the learned Counsel for the Respondent, the Appellant having admittedly not used the trade marks for
manufactured tobacco other than cigarettes at any time, the Registrar is justified in restricting the registration to cigarettes alone. The question is
which of the above two rival contentions can be accepted as tenable.
For appreciating the rival contentions, it is necessary to scan through some of the provisions of the Act which are relevant in the context of the
present discussion. Section 2(g) defines goods as meaning anything which is the subject of trade or manufacture. Section 2(v) defines trade mark in
relation to rectification proceedings as a mark used or proposed to be used in relation to goods for the purpose of indicating a connection in the
course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark whether with or
without any indication of the identity of that person. Section 8(1) enables a trade mark to be registered in respect of any or all of the goods
comprised in class of goods and provides that any question arising as to the class within which the goods fall shall be determined by the Registrar
whose decision in the matter shall be final. Section 12 imposes a prohibition of registration of idestical or deceptively similar trade marks. Section
12(1) says that no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a
trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. Section 23 deals
with the procedure for registration of trade marks. Section 25 deals with the duration, renewal or restoration of registration. Section 32 makes the
registration conclusive as to its validity after seven years. Section 46 provides for removal of any registered trade mark from the Register of
imposition of limitations on such registration on the ground of non-use. The grounds set out in that section for removal of the trade mark from the
register are (1) if the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in
relation to those goods by him, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor
thereof for the time being upto a date one month before the date of the application or (2) that up to a date one month before the date of
application, a continuous period of five years or longer had lapsed during which the trade mark was registered and during which there was no bona
fide use thereof in relation to those goods, Sub-section (2) of Section 46 provides that in certain circumstances the Registrar may impose on the
registration of the trade mark such limitations as he thinks proper for securing that that registration shall case to extend to a particular area or in
relation to goods dealt with in a particular manner. Section 56 deals with the power of the Registrar to cancel or vary registration and to rectify the
register either at the instance of a person aggrieved or suo motu, Section 57 enables the Registrar to correct the register at the instance of the
registered proprietor Section 133(2)(a) enables the Central Government to make rules for classification of the goods for the purpose of registration
of trade marks and empower the Registrar to amend the register. Rule 97 of the Trade and Merchandise Marks Rules, 1959 sets down the
procedure for alteration or rectification of the register. Fourth Schedule classifies the various goods for purposes of registration. Class 34 is as
follows:
tobacco, raw or manufactured smoker''s articles; matches.
It is not in dispute that the Appellant applied for and got his trade marks registered in respect of manufactured tobacco in the years 1942 and
1955. That it has been using the trade mark ever since then in respect of cigarettes manufactured by if is also not in dispute. The Respondent has
sought rectification of the register with reference to the Appellant''s trade mark on the ground of non-user of those trade marks for manufactured
tobacco. It is not in dispute that cigarette has not been shown as a separate and independent item in the classification contained in the fourth
Schedule and cigarette can only be brought under the entry manufactured tobacco. Under the classification of goods in Schedule 4, all products
made out of tobacco can only be classified either as raw tobacco or as manufactured tobacco. Thus, even if a person applies for registration of a
trade mark with reference to cigarettes or beedies, cheroot or chewing tobacco, registration can be made only for manufactured tobacco.
Therefore the registration of the trade marks under class 34 for manufactured tobacco cannot be said to be bad, nor can it be said that the
registration of the trade marks for manufactured tobacco is wrongly on the register. So long as the Act or the rules do not separately refer to the
particular form of manufactured tobacco or purposes of registration, the registration for all forms of manufactured tobacco can only be done under
manufactured tobacco and such registration cannot be said to be contrary to the Act or the rules. It is true the Appellant has not so far evinced any
intention to manufacture any article other than cigarettes. But that will not enable the Respondent to say that the Appellant is not using the trade
mark for manufactured tobacco. As a matter of fact the Appellant has been actually using the registered trade marks for one form of manufactured
tobacco namely cigarettes. Therefore there is no question of non-user of the trade marks for manufactured tobacco unless the Respondent
succeeds in showing that cigarette is not a form of manufactured tobacco. Though an attempt was made by the learned Counsel the Respondent to
show that cigarette is not manufactured tobacco and, therefore, the registered trade marks in this case had not been used for manufactured
tobacco for which registration has taken place, he is not able to say under what head cigarette manufactured by the Appellant could be brought in
for purposes of classification and registration of trade marks if it does not fall within manufactured tobacco. In this connection it is-significant to
note that the Respondent himself has applied for registration of his trade mark in respect of chewing tobacco. Quiwan and Zarda under the head
manufactured tobacco. Therefore the registration of the trade marks for manufactured tobacco cannot be said to be wrongly on the register. It is
true, the Appellant is not using the trade marks for all forms of manufactured tobacco. But that does not mean that the user of the trade marks for
cigarettes is not a user for manufactured tobacco. The Registrar has taken the view that as various products are obtained from manufactured
tobacco such as cigarettes, cigars, pipe tobacco, chewing tobacco, snuff etc., the use of the trade mark for cigarette alone cannot amount in its full
sense to the use of the mark on manufactured tobacco and, that, therefore, it would be more appropriate on the facts of this case to a say that the
user of the trade marks exclusively for cigarettes only tantamount to a non-use of the marks on all other types of manufactured tobacco except
cigarettes. Thus, though the Registrar has rightly rejected the contention of the Respondent that cigarette is not manufactured tobacco, he had
taken the view that the exclusive user of the trade mark for cigarettes should be taken to be a proof of non-user in respect of other types of
manufactured tobacco. From this the Registrar draws an inferences that the impugned trade marks had been registered for manufactured tobacco,
without any bona fide intention on the part of the Appellant to use those marks on other items of manufactured tobacco other than cigarettes and
thus obvious lack of bond fide intention coupled with the actual non-use of the impuguned mark on goods other than cigarettes since inception
clearly attracts Section 46(1) of the Act. It is in this view the Registrar exercised his discretion u/s 46(1) and ordered rectification of the register by
limiting the impugned registration to cigarettes, as according to him the limitation of goods would not only be consistent with justice and equity but
also be conducive to the maintenance of the purity of the Register.
The Register in support of his view that the interest of purity of Register calls for the rectification ordered in this case relies on the following
decisions; In Edward v. Dennis C.B. 30 Ch. D. 454, it was held that a right form of order in a rectification would be not to exclude from
registration goods of the applicant but to confine the registration to goods on which the impugned mark is actually used. In the Matter of the Trade
Marks of Suter, Hartmann and Rantjan''s, Composition Company Ltd. 19 R.C.P. 42, it was observed that the proper form of the order in a
rectification would be to confine the entry to the goods in respect of which the registered trade mark had been used so as to avoid a far as possible
further applications to limit and that this would be in the interest a like of the owner of the prior trade mark and of the public. In Burke''s Trade
Mark case 34 P.C.P. 213, a mark registered in respect of all goods (food products under class) 42 was sought to be rectified by excluding fish of
all kinds packed in tins being the goods of the applicant of rectification, but the register was ultimately rectified by limiting the impugned registration
to sugar on which alone the impugned mark was actually used.
The question is whether the order of rectification limiting the registration of trade marks to cigarettes alone in this case could be sustained
legally.
It is no doubt true that a Court or Tribunal is primarily concerned with the purity of the Register and advantage to the public by an entry
remaining on the Register in the appropriate form. ROMER L.J., expressed in Hostes case (1959) R.P.C. 120.
In my opinion neither the Respondents nor the public will suffer any hardship or disadvantage at all if the registration of the Respondents'' trade
mark were to to rectified ... whereas it would be an unwarranted inconvenience to Lyons to refuse their application for rectification in that regard. I
would accordingly allow the appeal.
Evershed M.R. observed that the terms of the provision in Section 26(1) of the English Act carry an unavoidable implication that prima facie
rectification shall not be refused except under exceptional circumstances. In Cari Zess Trade Mark Case (1970) P.R.C. 139, the Australian High
Court observed at page 146:
It has been urged upon me that no deception of any particular purchaser has been proved and that there is no practical interest of the public to be
served by removing the mark from the Register. This seems to me to put the matter the wrong way round. The Sifting''s omission to use the mark
for the statutory period entitles the applicant to have the mark removed from the Register unless sufficient reason appears for leaving it there. No
advantage that I can see would accrue to the public from maintaining the register in its present form.... I can see no reason for allowing this
perversion of the trade mark law to continue.
These decisions lay down that were a case of non-user has been, made out clearly, the court will not be justified in refusing rectification in exercise
of its discretion and the discretion can be properly exercised by rectifying the register suitably. This is on the basis that the user of the trade mark
alone will justify the registration as otherwise it will amount to a copy right. In John Batt and Co. v. Dunnett. 16 R.P.C. 411, 413 (HL), Lord
Halsbury L.C. remarked.
The Trade Mark Acts are not for copyright in marks, they are to protect trade marks. If you have no goods (to use the trade mark) you are
claiming only copyright, you are not claiming for the purpose of protecting your trade.
But the main and substantial question in this case is whether case has been made out by the Respondent for rectification of the Register on the
ground of non-user of the registered trade mark in respect of the goods for which it is registered.
As already pointed out, cigarettes which are being manufactured by the Appellant have not been separately classified and it can be brought
only under the head manufactured tobacco occurring in Clause 34. It is well-established that a classification of goods is primarily to facilitate the
search which is necessary to ascertain whether an application is objectionable u/s 12 and the fact that certain goods may fall within the same class
is no evidence that they are goods of the same description which is the important criterion for considering the restrictions on registration imposed
by Section 12 and the provisions relating to rectification on the ground of non-use. It is also equally well-established that if a trade mark has been
registered under the general heading manufactured tobacco referred to in class 34, the registered proprietor cannot be compelled to produce or
deal with all goods falling under that category on pain of losing his trade mark, for non use.
Dealing with an application for rectification of a trade mark u/s 26 of the English Trade Marks Act, 1938 which corresponds to Section 46 of
the Act on the ground of non-user for all the articles mentioned in the class for which the trade mark had been registered in Edward v. Dennis 30
Ch. D. 454, 474, Cotton L.J., had said:
It is not the intention of the Act that a man registering a trade mark for the entire class and yet only using it for one article in that class can claim for
himself the exclusive right to use it for every article in that class.
In that case the registration was for unwrought and partly wrought metals used in manufacture. This class being inclusive of vast number of things, it
was held that the registered proprietor was not entitled to use the mark for every article coming under the class. In Hart''s Trade Mark 19 R.P.C.
569, the registration was in respect of the whole class of substances used as food, or ingredients in food. It was held in that case that the registered
proprietor of the trade mark cannot claim exclusive right to use it for every article coming under that class such as condensed milk and therefore
condensed milk has to be excluded from the specified class of goods for which mark had been registered. After referring to the above two
decisions ROMER J., in Lever Brothers, Port Sunlight Ltd., v. Sunni White Products Ltd. 66 R.P.C. 84, says:
In my judgment it would be quite wrong to split up detergents in the manner suggested and to say that because the Plaintiff''s mark has been
applied to saponaceous, but not to soapless detergents the registration should now be limited to the former category alone as it is possible to make
detergent preparations containing both soap and soapless detergent.
Romer J., pointed out that there was no justification for limiting the existing registration of the Plaintiffs'' mark in relation to detergents. In that case
the original registration of the Plaintiffs'' mark Sunlight was in respect of common soaps, detergents, starch, blue and other preparations for laundry
purposes referred to in class 47 and in respect of perfumed soaps, toilet articles and other perfumery. The Defendants contended that the
Plaintiffs'' mark should be removed from the register in respect of substances for laundry use. Romer, J., felt that there are no principles of trade
mark law that would justify him in acceding to the Defendants'' claim that the Register should be rectified by removing the Plaintiffs'' mark in
respect of substances for laundry use, that even though substances for laundry use may not strictly fall within the expression in class 47 this will still
be goods of the same description for the Plaintiffs'' Sunlight products have been for years advertised as and become vary widely known to the
public as being materials for inter alia laundry purposes. In those circumstances he was not prepared to exercise his discretion which is vested in
him by rectifying the Register so far as substances for laundry use are concerned. In Impex Electrical Ltd., v. Weinbaum (1927) 44. R.P.C. 405,
the Plaintiffs obtained registration of the word Dario as trademark in Class 8 in respect of apparatus in that class for use in wireless telephony and
telegraphy and in Clause 13 in respect of electrical goods included in that class. An action for infringing the trade mark was met by the Defendants
with a notice of motion for the rectification of Register by removing the trade mark therefrom. In the course of the judgment holding that
infringement had been established, and dismissing the motion to rectify, Tomlin J., said:
I may add, I do not understand how it is possible because a particular category of goods falling within the class in which the mark is registered
have not in fact been sold with the mark on them to say that the mark has not been used when in fact it has been used upon other goods in the
same class.
The learned Judge made these observations having regard to the fact that the Plaintiffs in that case had obtained their mark to certain thermioric
valves which came under the category of goods for which the trademark is registered and it was immaterial that they had not applied it to others
and that there was no power in the court when asked to rectify the Register to count out a particular valve. In Zenith Radio Corporation''s
Application 68 R.P.C. 160, the applicant for rectification showed that although the mark was registered for parts of wireless sets and also for
complete sets, the registered proprietor had no present intention to use their mark Zenith in respect of wireless sets. The Respondents successfully
invoked proviso to Section 26(1) by showing that they had used the said mark in respect of component parts of wireless sets which are of the
same description as complete wireless sets. In J. Lyons and Co. Ltd. (1959) R.P.C. 120, icc cream was excluded from the general clause
substances used as food or as ingredients in food. In Electrolux v. Electrix (1954) 71 R.P.C. 23 C.A., floor polish was excluded from vacuum and
section cleaners.
In the following cases, Walpamur Company Ltd. v. A. Sunder son and Co. Ltd. (1926) 43 R.P.C. 385, Impex Electrical Ltd. v. Weinbaum
(1927) 44 R.P.C. 405, and Columbia Gramophone Co. Ltd. (1932) 49 R.P.C. 621 (C.A.), it has been held that where there has been use only
on some of the articles included in the specification of goods for which the mark is registered, the Court may limit the registration to such goods.
Almost all the cases referred to above in which rectification had been ordered limiting the registration to the articles for which trade mark has
been used related to cases of registration for a class of articles but the use of the mark had been only to one of the articles in that class. These
decisions may not therefore apply to the case on hand where the registration was for an article in a class and not for a class of articles. I am of the
view that the facts in the present case clearly attract the principle laid down by Romer J., in Lever Brothers, Port Sunlight Ltd. v. Sunniwhite
Products Ltd. 66 R.P.C. 841, and TOMLIN J. in Impex Electrical Ltd. v. Weinbaum (1927) 44 R.P.C. 405. In this case the registration had not
been in respect of a class of goods, but in respect of one article manufactured tobacco coming within the class of goods referred in class 34. The
Appellant has been using the mark for the article for which it is registered. It is true that the Appellant has not been using his trade mark for all
forms of manufactured tobacco, or for all articles which answer that description. The court which is asked to rectify the Register, however, has no
power to cut out the entry manufactured tobacco in class 34 and limit the registration to an article not separately treated in class 34. Even though
the non-user of the mark for other forms of manufactured tobacco is established, nevertheless, the registration of the mark for manufactured
tobacco cannot be said to be illegal or improper as it is the only item in class 34 under which cigarettes could be registered. Nor can such
registration affect the interest of the purity of the Register. In any event, in this case the Appellant has admittedly used the trade mark in relation to
cigarettes which are goods of the same description manufactured tobacco for which the mark is registered and this will attract the proviso to
Section 46 and that is a sufficient defence to the application for rectification.
I am aware that in trade mark cases conditions peculiar to India must be borne in mind in applying any doctrine of English law, and English
decisions which turn or partly turn on questions of fact can only be applied with care and circumspection, as pointed out by the Privy Council in
T.B. and Sons. v. Prayag Narain (1940) P.C. 86. In that case an Indian manufacturer of smoking tobacco was selling his goods under a certain
trade mark. A manufacturer of chewing tobacco used similar mark. The question arose as to whether the manufacturer of chewing tobacco using
similar mark is likely to deceive public that they are purchasing chewing tobacco manufactured by the former. After stating that it will be a question
of fact to be decided on the evidence adduced, that the vital element in such a case is the probability of deception which may depend on a number
of matters such as the similarity of the marks or of the get up, the Privy Council laid down the following general principle founded on justice and
equity:
No man is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or
means, whereby without, making a direct false representation himself to the purchaser who purchases from him, he enables such purchaser to tell a
lie or to make a false representation to somebody else who is the ultimate purchaser.
According to the Privy Council, though there can obviously be no monopoly in the use of trade mark, a manufacturer of cigarettes, who has an
undoubted trade mark such as an animal, or any other device cannot legally object to the use of the identical mark on say, hats, or soap, for the
simple reason that purchasers of any of the latter kinds of goods could not reasonably suppose, even, if they were well acquainted with the marks
used on cigarettes, that its use on hats or soaps denoted that these goods are manufactured or marketed by the cigarette manufacturer. In an earlier
case in Somerville v. Schembri (1887) 12 A.C. 453, their Lordships of the Privy Council had however recognised the possibility of a confusion in
cases such as follows:
If a manufacturer of a special kind of smoking tobacco under a trade mark seeks to restrain the use of it on cigars, or on a very different kind of
smoking tobacco, or on cigarettes or on snuff, or on chewing tobacco, or on tobacco in some form sold for use as a weed killer-all these things
being made of tobacco-questions, sometimes of great difficulty may arise. It is however very important to observe that each of these questions will
be a question of fact to be decided on the evidence adduced. The vital element in such a case is the probability of deception. This may depend on
a number of matters as well as the question of similarity of the marks or of the get up.
Thus their Lordships of the Judicial Committee of the Privy Council appear to have made a distinction between use of the trade mark by a
Defendant on goods not closely similar in character to the Plaintiffs'' good and the use of the trade mark on goods closely similar in character to the
Plaintiffs'' goods. In the former instance there cannot be any deception but, in the latter case there is a deception. Whether there is bound to be a
deception or not will naturally depend upon the facts of each case. This decision is an authority for the proposition that when there is registration of
a trade mark for manufactured tobacco in Class 34 but its use is confined to cigarettes another manufacturer of smoking tobacco, cigars, snuff, or
chewing tobacco or any form of manufactured tobacco-all these things being made of tobacco-cannot use the registered trade mark so as to
create confusion or deception in the mind of the purchaser that the goods sold under the trade mark have been produced by the cigarettes
manufacturer. As already pointed out, there may not be much difficulty in upholding the use of the Appellant''s trade mark by the Respondent in
respect of the goods which are of totally different character from the articles manufactured by the former. But the difficulty arises when the articles
manufactured are not entirely different but have a trade connection. In Rustom Ali Molla and Others Vs. Bata Shoe Co. Ltd., Bata shoe company
which used the trade mark Bata in respect of canvas rubber leather shoes, etc., brought an action for passing off against the use of the word Bata
in respect of lunges manufactured by another. It was hold by a Division Bench of the Calcutta High Court that the acquisition of an exclusive right
to a mark or name in connection with a particular article of commerce cannot entitle the owner of that right to prohibit the use by others of such
mark or name in connection with goods of a totally different character and such use by others cannot be said to be interference with the said right.
It was found in that case that the mark Bata not having been associated in the public mind with lunges or hand kerchiefs which are goods of a
totally different character from those of the Bata Shoe Company''s goods the use of the said mark or name in respect of lunges or handkerchiefs by
another cannot constitute any passing off of his goods as those of the Bata Shoe Company. In Sunder Parmanand Lalwani and Others Vs. Caltex
(India) Ltd., the trademark caltex was sought to be registered for watches and certain other goods. This was opposed by the reputed company of
Caltex (India) Ltd., which dealt with petrol and petroleum products throughout India. In spite of the fact that the goods for which the Appellants
therein sought the trade mark caltex to be registered have nothing to do with the petrol and petroleum products, it was held by a Division Bench of
the Bombay High Court that the registration of the trade mark should be refused to the Nestle''s Products Limited and Another Vs. Milkmade
Corporation and Another, , was a case where the Appellants before the High Court were the registered owners of a trade mark Milk made in
respect of the condensed milk manufactured by them. The Respondent before the High Court used the trade name Milk made Corporation in
respect of biscuits and toffees. It was held by the Court that there was no cause of action as against the Defendant which dealt with goods which
are entirely different from the goods dealt with by the Plaintiffs. In Ethicon Inc. of U.S. Highways No. 202 v. Equipments and Systems (P) Ltd.
(1976) 89 L.W. 502 N.S. Ramaswami J., held that the objection to the registration of a trade mark efficon in respect of certain stationery articles
such as copying machines, carbon paper copying ink, copying paper, etc., by a manufacturer of surgical goods under a registered trade mark
Ethicon in respect of surgical goods manufactured by them cannot be sustained, as there is no possibility of deception. In Eno v. Dunn (1890) 7
R.P.C. 311 Lord Hers Cell observed:
If a trader uses the words ""fruit Salt"" as a trade mark for medicinal preparation, the use of the same mark for umbrellas by another person would
be perfectly unobjectionable as no reasonable man would suppose that ''fruit salt Umbrella is in any way connected with goods manufactured by
the first trader.
The learned Counsel for the Respondent contends that chewing tobacco manufactured by the Respondent and cigarettes manufactured by the
Appellant are not goods of the same description and, therefore the Appellant''s mark should not have been registered in respect of manufactured
tobacco which includes not only cigarettes, but also chewing tobacco, cheroots, beedies, snuff, etc. But as already stated so long as separate
classification has not been made in respect of the above items which are merely different forms of manufactured tobacco the registration of the
Appellant''s trade mark in respect of manufactured tobacco cannot be said to be bad. As the Legislature has not made any distinction between the
various forms of manufactured tobacco, it may be taken to have intended that all forms of manufactured tobacco should be registered under a
single entry manufactured tobacco in class 34. Though cigarettes and chewing tobacco cannot be said to be identical, still they have a trade
connection as they are merely two different forms of manufactured tobacco and the used of the same or similar mark for chewing tobacco or any
other form of manufactured tobacco is likely to cause confusion or deception in the minds of the public that the cigarette manufacturer is also the
manufacture of chewing tobacco or the other form of manufactured tobacco. It is true, it is not the intention of the Act that a man registering a trade
mark for the entire class in Schedule 4 and yet only using it for one article in that class can claim for himself the exclusive right to use it for every
article in that class and that a man, who has registered a mark for one class cannot claim exclusive right to use in respect of articles not comprised
in that class, but comprised in some of the other class. If really chewing tobacco manufactured by the Respondent are not goods of the same
description as cigarettes as contended by the Respondent, then there is no necessity for rectification of the Register as sought for by the
Respondent. They can straightway proceed to use their trade mark without being prevented by the Appellant. The difficulty has arisen in this case
only because chewing tobacco and cigarettes are of the same genus manufactured tobacco found in class 34 and there is likelihood of confusion or
deception resulting in the purchaser of chewing tobacco believing that he is purchasing the goods of the Appellant. In this case the Appellant is said
to have been spending more then Rs. 25 lakhs every year in recent years as advertisement expenses with reference to its trade mark Charminar
and the benefit of such advertisement at a heavy cost cannot be taken advantage of by the Respondent.
It is next urged by the Appellant that though he is only manufacturing cigarettes by using the trade mark Charminar he may, in future
manufacture chewing tobacco and use the trade mark. Though I cannot agree that intention to use the mark for chewing tobacco in future may not
decide the issue as registered proprietor of the trade mark he is entitled to show that a name substantially identical with his ought not to be allowed
to be used by the Respondent in the way in which they are attempted to be used and that so long as the goods manufactured by the Respondent
also fall under the head manufactured tobacco the use of similar or competing trade mark with reference to chewing tobacco is likely to cause
confusion or deception in the minds of the public. It is because the Appellant''s trade mark stood against the registration of the Respondent''s trade
mark with reference to chewing tobacco which is similar to that of the Appellant, the Respondent has come forward with the application for
rectification limiting the registration to cigarettes and the Registrar has rectified and altered the Register by removing the words, manufactured
tobacco and substituting cigarettes in their place. As pointed out by ROMER L.J., in Clock Ltd. v. Clock Horse Horn Ltd. (1936) 53 R.P.C.
269, 27:
No man is entitled to carry on his business in such a way or by such a name as to lead to the belief that he is carrying on the business of another
man or that the business which he is carrying on has any connection with the business carried on by another man.
As already stated, because there is no separate classification for cigarettes the Registrar has no justification to register a trade mark with
reference to an article not classified under Schedule 4. If the Registrar had altered the registrative amending the entry manufactured tobacco in the
register as not excluding chewing tobacco it would have been a different matter. But the registration altered is only for cigarettes and not for
manufactured tobacco. For the purpose of registration of trade marks the goods had been classified as classes 1 to 34 in the Fourth Schedule to
the Rules. Rule 26(1) says that every application for registration shall be in respect of goods comprised in one class only. These provisions indicate
that registration is possible only in respect of goods specified or enumerated in classes 1 to 34 of the schedule and no registration is possible in
respect of an article not enumerated in any of the classes. As cigarettes have not been specified as an article either in class 34 or in other classes,
there can be no separate registration in respect of cigarettes. This ground alone is sufficient for setting aside the order of the Registrar.
Thus I am not inclined to uphold the order of the Registrar for the following reasons: (1) He has no jurisdiction to make a sub-classification of
the article manufactured tobacco found in class 34. (2) To sustain registration for an article ""manufactured tobacco in class 34 it is not necessary to
establish user of the mark for all forms of manufactured tobacco. (3) The rectification ordered enables the Respondent to pass off his chewing
tobacco as the goods of the Appellant.
The appeals arc therefore allowed and the order of the Registrar is set aside. There will be to order as to costs.