U. Foam Pvt. Ltd., Hyderabad vs The Asst. Registrar of Trade Marks, Madras

Balasubrahmanian, J.—These are appeals under S. 109(5) of the Trade and Merchandise Marks Act, 1958. The appellant is a private

limited Company called ""U"" Foam Private Limited, Hyderabad carrying on business from 1960 in the manufacture and sale of mattresses, pillows

and cushions and sloe sponges, made essentially from a substance called polyurethane foam. The appellant''s products were being marketed under

the mark ""U"" foam. In 1966 the appellant applied to the Assistant Registrar of trade Marks, Madras, for registration of two of its trade Marks in

part A. One was a mark carrying the letter ""U"" with a crown device on top. The other was a mark carrying the word ""U Foam"" with the same

crown device on top of the first letter. As resents the latter Mark. The appellant made a disclaimer of the word foam. The Assistant Registrar,

however, rejected the applications. He held that the trade marks were not distinctive. His view was that the letter ""U"" was merely the first letter of

the commodity-name urethane. As for the crown device, he did not think it looked like a crown at all. According to him, it was a non-descript

object.

On appeal, K.S. Venkataraman, J., found that the appellant had established a name and even a near-monopoly for its products going under the

name U-foam. He accordingly observed that the trade Marks might be held to be factually distinctive. He also found no objection to the letter ""U

foam per se. But he proceeded to hold that both the trade marks were not inherently distinctive. In this view, he altogether denied registration to

the trade mark ""U"" with the crown device. For the other trade mark consisting of the letter U-foam and the crown device, he directed registration

under part A. subject, however, to the disclaimer both of the letter ""U"" and the word ""foam"".

The appellants have now come before us in further appeal. Mr. Govind Swaminathan, learned counsel for the appellants contends that both the

Assistant Registrar and the learned Judge were in error in refusing the registration as applied for. He submitted that the two trade marks were

distinctive enough to be registered in part A. According to him, what gave them their distinctive character was not the letter alone, nor the word

alone, but the combination of each which the device of a crown. His complaint was that neither the Assistant Registrar nor the learned Judge saw

them whole, but proceeded to consider the letter the word and the crown device, as though each one was a trade mark in itself and each had to

prove its individuality.

We must accept learned counsel''s criticism as justified. The Assistant Registrar and the learned Judge had mistaken the trees for the wood. The

Act defines a ""mark"" in S. 2(j) as including ""a device, brand, heading, label, ticket, name signature, word, letter or numeral or any combination

thereof"". It seems to us therefore, that where a mark is a combination of a letter and a device or a word and device, the get-up as a whole must be

considered for registration. For the true test is, what is the totality of the impression that the trade mark produces and whether the impression so

produced is such as would cause confusion or deception. (See Halsbury (Simonds Edn.) Vol. 38 p. 589). The Asstt. Registrar and the learned

Judge were not properly instructed in the law in taking the appellant''s marks to pieces and dividing *****

***** between them, and now to ***** now to the other. They should ***** the marks with undivided ***** for obtaining an overall

impression of their distinctiveness.

Learned Counsel''s further complaint is that the significance of the crown device was completely lost upon the learned Judge and the Assistant

Registrar. The latter had let fall into the remark that no person seeing the device would accept it as a correct representation of a crown. We feel

that this last remark was quite in apposite in registration proceedings. We believe that the point of discourse before the Assistant Registrar was

whether the device was distinctive, not whether it was artistic. The Trade Mark Office is no place for indulging in high fault in art criticism. In the

realm of trade marks, a man may fling a pot of paint in the public''s face and call it a trade mark, although he may not do so in the Tate Gallery and

call it art. The Assistant Registrar also called the crown in the appellant''s trade mark a non-descript. If it really was that, then so much he better for

its distinctiveness.

Across the Bar, we were shown the two trade marks. The first depicted the letter ""U"". What we saw was no ordinary letter of the English

alphabet; in the appellant''s trade mark it wore a crown and looked quite distinguished. As for the crown, it appeared majestic enough more

because of its positioning than anything else. Together, the letter and the device produced a marked impression of distinctiveness. We found this to

be true of the other trade mark as well. Only more so, with the word and the hyphen thrown in for good measure.

We believe it is a truism of this department of the law to be told that the Judge has to look at the trade mark himself and not leave it to others to

see if it is distinctive. Now we have seen the appellant''s marks ourselves, we are satisfied that they pass the test. So much for inherent

distinctiveness.

Venkataraman, J., had considered the other aspect, namely factual distinctiveness, and he expressed complete satisfaction about its presence in

this case. Indeed, he let the record speak for itself. The appellant, it would seem, started putting out its foam mattresses, pillows etc., under its

mark in 1960. From then on here was no looking back. The sales in 1960-61 accounted for Rs. 85,000/-. By 1966-67 they rose to Rs.

34,66,512/-. Sales of sponges were also registered a quick rise. In 1960-61 they were Rs. 3,100/- in 1966-67 they rose to Rs. 1,30,000/-.

Advertisement expenses were all the time rising. In 1960-61 the appellant spent Rs. 68,000/-. The appellant was the first in this line of trade. In ten

years it took to establish itself in the market, the appellant has had no rival and no imitator, even. The products are in constant demand, and the

marks are for ever in the public eye. Shoppers have become familiar with then U foam mark with the inevitable crown device. People have come

to associate the mark with the appellant''s goods. There is now little chance of their mistaking the U-foam goods for any one else''s.

The trade marks before us thus answer every test prescribed by S. 9(3), (4) and (5) for distinctiveness. There is no dispute that the first

application in relation to mattresses, pillows etc., falls under Entry 20 of the Fourth schedule, and that the application in relation to sponges falls

under Entry 21 of the same Schedule. All the objections to the trade marks were self-generated by the Assistant Registrar himself, a process which

courts have held can, on occasion, be overdone.

Learned Counsel appearing for the respondent has no arguments to address before us. The decisions under appeal are insupportable.

We, accordingly, allow the appeals and direct the Assistant Registrar to proceed with the registration of both the appellants trade marks under

Part A, subject to the appellant''s disclaimer of the expression ""foam"" in the latter trade mark. In the circumstances, we make no order as to costs.

Appeals Allowed.