Tikkam Chand, S/O. Late Sh. Ganga Ram, 5051, Netaji Subash Marg, New Delhi And Prince Gutka Ltd. Registered Office At 5051, Netaji Subhash Marg, New Delhi vs Assistant Registrar Of Trade Marks Trade Marks Registry New Delhi And Ors.

Prabha Sridevan, J

This appeal is against the order referring to register the mark GUTKA in favour of the appellant herein. The Registry cancelled the advertisement

of the mark and the application was rejected on the ground that GUTKA could not be registered as a trade mark. The learned counsel for the

appellant submitted that the application was in the year of 1984 and therefore one must put oneself back in time and decide the matter accordingly.

The learned counsel submitted that it is only on being satisfied that the mark was registerable that it was directed to be advertised and thereafter it is

not open to the succeeding registrar to take a different view. The learned counsel submitted that the mark had acquired distinctiveness. The Registrar

could not have given a finding that it was generic based on the probability, it should be a concrete finding of fact, that the evidence based on which the

registration was removed must be considered evidence. According to him u/s 19 of the Trade and Merchandise Marks Act, 1958 (Act in short) there

is no occasion for any objector to invoke the jurisdiction of the Registrar. The matter was solely between the Registrar and applicant and no objector

should have been heard.

The learned counsel made elaborate arguments with regard to the mark GUTKA, however, we find that many of these issues had attained finality

by the order of the Hon'ble Delhi High Court in C.M. NO. 103/1998 dated 23rd July, 1998. The same appellant was the writ petitioner therein. He

challenged the issuance of the letter dated 21.10.1997 whereby a show cause notice was issued u/s 18(4) & 19 of the Act.

Before the Hon'ble Delhi High Court, the appellant claimed that in the year 1977, the son of the appellant introduced a small pouch for which he had

given the name GUTKA, they were sold in the name Prince (Registered No. 414884B in Class 31). On 5th May, 1984, an application was made

under No. 421497 in Class 34 for the mark GUTKA. On 10th December, 1987 the objections were invited. After the Deputy Registrar passed the

order on 26.04.1993, the impugned notice was issued to show cause. Before the Hon'ble Delhi High Court, the same contention was raised that the

Registrar has no power to reconsider after virtual acceptance of an application for registration, but before actual registration. This objection was

rejected by the Hon'ble Delhi High Court in view of Section 18(4) /19, it was held that ""it is very much evident that the Registrar may withdraw the

acceptance of the trade mark"". As far as the trade mark concerned, the Hon'ble Delhi High Court held that ""if GUTKA is used with some other

words, it acquires a special meaning, otherwise it is very generic word which cannot be monopolised by anybody"". The Hon'ble Delhi High Court

directed that the Registrar of Trade Mark should hear the applicant and the alleged objectors to decide the question ""whether the applicant through

trade mark GUTKA has acquired any reputation in relation to his goods like the word 'Safi' in reported case"".

From this it is clear that certain issues cannot now be raised by the appellant:

a) Whether the Registrar has the jurisdiction to issue the show cause notice and consider whether the mark must be registered invoking Sec. 18(4) /19

whether the word GUTKA is generic.

b) The Hon'ble Delhi High Court has held that the Registrar does have the jurisdiction and the word GUTKA is generic.

So all that the appellant can show is that though it is a generic word, the appellant through that mark had acquired a reputation in relation to his goods.

He cannot also raise the question whether the objectors could be heard.

The learned counsel appearing for the respondent submitted that after the High Court sent the matter back though several opportunities were given

to the appellant by the Registrar to file evidence to prove that the mark had acquired distinctiveness, he had not done so.

We find from the records that on 10.09.1998, the Assistant Registrar had ordered that both the applicant and the objector may file the evidence

before the next date of hearing. This was pursuant to the order of the Hon'ble Delhi High Court referred to above. The matter was adjourned to

16.10.1998. On 18.12.1998, an order was passed; it shows that when the application was taken up for hearing on 16.10.1998, no one appeared for the

applicants but the objectors filed some affidavits as the evidence. The Registrar again ordered that if the applicant desires to file evidence, he may do

so on the next date of hearing which was on 25.01.1999. From the records, it is seen that the matter had been listed thereafter on 16.02.1999, when no

one appeared for the applicants and he requested for adjournment was made vide TM-56 dated 5.4.1999. The final opportunity for filing their evidence

was given by the Registrar adjourning the matter on 12.05.1999 stating that this was the last and final chance. Therefore it is clear, despite several

opportunities, no evidence was filed by the applicant though the order of the Hon'ble Delhi High Court was clear that it was open to them to file

evidence. From the impugned order, it is stated that the appellant had relied on the evidence filed by them in record of their application claiming user

since 1.03.1977. The respondent had shown that there were numerous person carrying on business in the name using the word GUTKA, for example

from Ashiqi Gutkha-Yes Boss Gutkha (From A--Y).

The learned counsel for the respondent also produced several official documents like the Gazette Notification dated 19.05.2003 of the cigarettes

and other tobacco products at 2003, where the schedule uses the word GUTKA as one of the tobacco products defined in Sec. 2(p) of the Act. The

learned counsel for the respondent relied on 1910 RPC Page 689--In the Matter of an Application by the Gramophone Company Ld. to Register

Gramophone"" as a Trade Mark. He relied on Gazette Notification, Mandatory Compounded Levy of Excise on Pan Masala and Gutkha. He referred

to (1997) 4 SCC 201--Vishnudas Trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad and Anr. where at para 45, though

extract class 34 of the 4th Schedule which refers to manufactured tobacco which includes Gutka.

SAFI was the mark in AIR 1980 Delhi 180 Para 7--Registrar of Trade Marks Vs. Hamdard National Foundation (India). In this case, no evidence

was led before the Registrar to show any other manufacturer of medicinal preparation was also using the trade mark SAFI and also evidence to show

that the trade mark SAFI is used by the respondent for more than 20 years. Therefore the Hon'ble Delhi High Court held that by constant use of the

mark, the respondent had legitimately claimed that this trade mark is exclusively connected with their goods. In the present case, the applicant has not

even come to file an affidavit in his claim to prove the reputation that he had acquired on the date of application for registration. It is evident from the

evidence filed by the respondent that for several decades GUTKA had been used as a matter of right by manufacturers of that particular tobacco

product. It had become publici juris. The appellant had not taken any step, as a proprietor, to protect his mark from becoming generic. And further, he

also had not adduced any evidence to show that the word GUTKA on its own was exclusively associated with his products. The fact that the

Government and the Central Excise Notifications GUTKA had used it as generic word shows that the applicant cannot claim to be a proprietor of the

mark. The impugned decision suffers from no error. Accordingly, the appeal is dismissed with cost of Rs. 50,000/- to be paid to the respondent No. 4.