Vishnudas Trading Versus Vazir Sultan Tobacco Co. Ltd.
Parties
The Appellant Vishnu Das Trading carries out the manufacturing of “quiwam” and “zarda” under the trademark “Charminar”.
The Respondent no. 1, Vazir Sultan Tobacco Co. Ltd., is indulged in the manufacturing of cigarettes under the brand name “Charminar”.
The Respondent no. 2 is the Assistant Registrar of Trade Marks
Brief Facts
Brief facts of the case are as follows:
The Respondent no. 1 obtained registration of its mark ‘CHARMINAR’ with respect to “manufactured tobacco” in the years 1942 and 1955 bearing numbers 9951 and 170427 respectively as per the rules laid down by the Trademarks Act, 1940 and the Trademarks Act, 1950 respectively.
The Appellant were using the same mark ‘CHARMINAR’ since 1973 in respect of “quiwam” and “zarda” and applied for the registration of the same under the Trade and Merchandise Marks Act, 1958 and the Trade Marks Rules, 1959
The Respondent objected to the same on the ground that the trademark sought by the Appellant is in conflict with the registered trademarks of the Respondent no. 1.
The Joint Registrar of Trade Marks on 24th September, 1973 observed that Applicant’s (Appellant) products “quiwam” and “zarda” come within the ambit of “manufactured tobacco”.
Subsequently, on 15th October 1973, the Applicant (Appellant) filed applications under Section 46 read with Section 56 of the Trade and Merchandise Marks Act, 1958 for the rectification of the trademarks held by the Respondent no. 1 on the assertion that the Respondent no. 1 had never manufactured anything other than cigarettes.
The Assistant Registrar, Trade Marks, Madras allowed the applications for rectification on 31st August, 1976 and ordered that the rectification of the Respondent’s trademarks would be done by limiting the registration in favour of the Respondent to specific goods being manufactured by them i.e. “cigarettes”.
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Thereafter, the Respondent no. 1 preferred statutory appeals under Section 109 (2) of the Trade and Merchandise Marks Act, 1958 before the Hon’ble Madras High Court. By a judgment dated 11th September, 1980 it was observed by the Ld. Single Judge of the Hon’ble High Court of Madras that the Assistant Registrar of Trade Marks had made a sub-classification of “manufactured tobacco” in Class 34 which could not be made. Therefore, the order of the Assistant Registrar, Trade Marks, Madras was set aside.
The Appellant thereupon proceeded to prefer two statutory appeals under Section 109 (5) of the Trade and Merchandise Marks Act, 1958 before a Division Bench of the Hon’ble Madras High Court. The decision of the Ld. Single Judge of the Hon’ble Madras High Court was reaffirmed by the Division Bench by a judgment dated 11th October 1990.
Issues
What is the validity of the order of rectification passed by the Assistant Registrar, Trade Marks, Madras?
Applicable Rules:
Section 18 (2) of the Trade and Merchandise Marks Act, 1958
Rule 26 (2) of the Trade Mark Rules, 1959
Section 12 of the Trade and Merchandise Marks Act, 1958
Section 46 of Trade and Merchandise Marks Act, 1958
Section 56 of Trade and Merchandise Marks Act, 1958
Section 109 of the Trade and Merchandise Marks Act, 1958
Arguments on behalf of the Appellant:
The Appellant argued that a trademark can only be granted for specific goods and not a generic class of goods. Section 18 (2) of the Trade and Merchandise Marks Act, 1958 postulates that applications cannot be made for goods that fall under more than one prescribed class of products.
Arguments on behalf of the Respondent:
The Respondent no. 1 concurred with the decision of the Madras High Court. They argued that the common trade channels through which a manufacturer’s product is marketed are crucial in determining whether the items are of the same or different description. Cigarettes, quiwam and zarda are all sold through the same trade channel. Furthermore, the Respondent no. 1 argued that even if the use of a registered trademark in respect of the class “manufactured tobacco” is limited to cigarettes, another manufacturer should not be permitted to use the trademark for manufacturing any product falling under the same class as it may lead to confusion in the minds of consumers.
According to Respondent No. 2, the registration of a variety of goods falling in the same class may be refused by a Registrar unless he is convinced that the specification is justified by the Applicant’s use of the mark as per Rule 26 sub-rule 2 of the Trade Mark Rules, 1959. “Manufactured tobacco” is a broad category. If a manufacturer obtains registration of a trademark for a broad class such as “manufactured tobacco,” it can claim exclusive use of the trademark for all products falling within the same class.
Ratio:
The Hon’ble Supreme Court concurred with the stance of the Appellant that “manufactured tobacco” is a broad class that encompasses:
Tobacco consumed by smoking cigarettes, cigars, bidis etc.
Tobacco consumed by chewing or ingesting quiwam, zarda, gutka etc.
Tobacco consumer by inhaling it in powder form.
The Apex Court asserted that even though products like cigarettes, cigars etc. and products like quiwam, zarda etc. both comprise of tobacco, they are entirely different in terms of their characteristics. Despite the fact that both of them are classified under the same umbrella term, “manufactured tobacco”, they are distinct products having separate entities.
The Apex Court went on the express its view that if a manufacturer has a registered trademark falling under a broad classification but it does not have a bona fide intention of manufacturing other articles falling under such a broad classification, then, the manufacturer should be restrained from enjoying a monopoly over all such articles by rectifying its registration so as to confine the same to specific articles which concern the manufacturer. It is fair to register only those articles for which registration is intended by the manufacturer. If such rectification is not allowed, the manufacturer may start trafficking in trademarks.
According to the Trade and Merchandise Marks Act, 1958, the registration of a trade mark is not absolute or perpetual. Section 12 sub-section 1 prohibits the registration of a mark that is identical or deceptively similar to a registered trade mark. Section 12 sub-section 3, permits the registration of a same or deceptively similar trademark in special circumstances subject to the opinion of the Registrar. The expressions “goods” and “description of goods” as used Section 12 sub-section 1 indicate that a registration may be issued in respect of one or more goods or in respect of all goods that conform to the general description.
In the facts and circumstances of the present case, the Apex Court was of an opinion that the rectification sought by the Appellant was valid and justified. Therefore, the Hon’ble Supreme Court set aside the judgments delivered by the Madras High Court and restored the order of rectification passed by the Assistant Registrar of Trade Marks, Madras.
Author: : Sonakshi Pandey, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing
