IN THE SUPREME COURT OF INDIAR.K. Agrawal, J.
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO. 2138 OF 2006
Lal Babu Priyadarshi .... Appellant(s)
Amritpal Singh .... Respondent(s)
J U D G M E N T
- The present appeal has been filed against the order dated10.01.2005 passed by the Intellectual Property Appellate Board (inshort â€˜the Boardâ€™) in Original Appeal No. 35/2004/TM/KOL wherebythe Board allowed the appeal filed by the respondent herein whilesetting aside the order dated 31.03.2004 passed by the AssistantRegistrar of Trade Marks.
- Brief facts:
(a) One Shri Lal Babu Priyadarshi-the appellant herein, trading as M/s Om Perfumery, Bakerganj, Daldali Road, Patna made an application to the Registrar of Trade Marks to register a trade mark by name â€œRAMAYANâ€ with the device of crown in class 3 in respect of incense sticks (agarbattis, dhoops) and perfumeries etc.
(b) One Shri Amritpal Singh-the respondent herein, was a dealer for the sale of the products of the appellant herein and was also trading as M/s Badshah Industries, Chitkohra, Punjabi Colony, Patna. The respondent herein filed a Notice of Opposition to oppose the registration of aforesaid trade mark under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958 [repealed by the Trade Marks Act, 1999 (47 of 1999)-in short â€˜the Actâ€™] claiming that the impugned mark, being the name of a religious book, cannot become the subject matter of monopoly for an individual.
(c) The Assistant Registrar of Trade Marks, after holding that the impugned trade mark consists of device of crown and the word â€œRAMAYANâ€ is capable of distinguishing the goods and is not included in the list of marks not registrable under the Act, by order dated 31.03.2004, dismissed the application filed by the respondent herein.
(d) Being aggrieved by the order dated 31.03.2004, the respondent herein preferred an appeal before the Board being Original Appeal No. 35/2004/TM/KOL. The Board, by order dated 10.01.2005, set aside the order dated 31.03.2004, passed by the Assistant Registrar of Trade Marks.
(e) Aggrieved by the order dated 10.01.2005, the appellant has filed this appeal by way of special leave.
- Heard Ms. Anuradha Salhotra, learned counsel for the appellantand Mr. Sudhir Chandra, learned senior counsel for the respondent.
- The sole question for consideration before this Court is whetherthe registration of the word â€œRAMAYANâ€ as a trade mark, being thename of a Holy Book of Hindus, is prohibited under Section 9(2) of theTrade Marks Act, 1999?
- Learned counsel for the appellant submitted that the appellantwas in the business of manufacturing, trading and marketing ofincense sticks since 1981 and the respondent herein was a dealer ofthe appellant herein. The goods under the trade mark â€œRAMAYANâ€have been advertised by him through various means including thepublication of cautionary notices in newspapers. Learned counselfurther submitted that through extensive use, wide advertisement andthe excellent quality of the products, the trademark â€œRAMAYANâ€ andthe carton in which the products are sold has become distinctive insuch a manner that use of the same or similar trademark or cartonby any other person will cause confusion and deception in the tradeand amongst the public. The sale was done through a network of dealers and distributors and the respondent herein was a dealer ofthe appellant herein. Learned counsel submitted that after thetermination of dealership, the respondent herein started sellingincense sticks under the trade mark â€œRAMAYANâ€ written in the samestyle and manner.
- Learned counsel further contended that the mere fact that thetrade mark, being the name of a religious book, cannot be a sufficientground for refusal of registration under Section 9(2) of the Act and isnot based on evidence on record that the feelings of any section of theHindus having been hurt by its use in relation to incense sticks. Shefurther submitted that the Assistant Registrar of Trade Marks rightlyheld that the impugned trade mark consists of device of crown andthe word is capable of distinguishing the goods of the appellant hereinand the trade mark is not included in the list of marks not registrableunder the Act. She further claimed that it has already been provedbefore the Court of Assistant Registrar that the appellant was usingthe trade mark since 1981 and hence, is the prior user in comparisonto the respondent. According to the learned counsel, the Board,totally misconstrued the observations of the Standing Committee inthe Eighth Report on the Trade Marks Bill, 1993. Relying uponClause 13.3 of the said report, it was submitted that even though theCommittee had observed that â€œany symbol relating to religious gods,goddesses, places of worship should not ordinarily be registered as atrade markâ€, it specifically refrained from prohibiting registration ofsuch marks. It was further submitted that the Board has erroneouslyrelied upon the decision of this Court in Registrar of Trade Marksvs. Ashok Chandra Rakhit AIR 1955 SC 558 by proceeding on thebasis that the said case was an authority on the question that allreligious names or symbols are prohibited from being registeredwhereas the fact of the matter is that this Court had merely upheldthe concurrent findings of the Registrar and the High Court that theword â€˜SHREEâ€™ was incapable of distinguishing the goods of any onetrader. The said case is also distinguishable by the fact that it wasthe invariable practice of the trade mark office not to register the wordâ€˜SHREEâ€™ but this is not so with the word â€œRAMAYANâ€.
- Relying upon a decision of this Court in Mumbai InternationalAirport Private Limited vs. Golden Chariot Airport and Another (2010) 10 SCC 422, it is further submitted that the respondent hereinhad himself claimed the use of the identical mark and therefore, it didnot lie in his mouth to object to the registration of the word in thename of the appellant. She further contended that the Board ought tohave seen that there are several cases which indicate that the use ofthe names of Hindu deities as trade mark is a common practice andno one has complained about the same being sensitive to Hindureligious sentiments for which reliance was placed on a decision ofthis Court in K.R. Chinna Krishna Chettiar vs. Sri Ambal & Co.AIR 1970 SC 146.
- Learned counsel also placed reliance on Corn ProductsRefining Co. vs. Shangrila Food Products Ltd. 1960 (1) SCR 968 insupport of the submission that before the applicant can seek to deriveassistance for the success of his application from the presence of anumber of marks having one or more common features which occurin his mark also, he has to prove that those marks had acquired areputation by user in the market.
- Learned counsel finally contended that the Board erred in lawwhile setting aside the judgment of the Assistant Registrar of TradeMarks while holding adversely about its distinctiveness, the markcausing deception and not having been used in an honest manner.
- Learned senior counsel for the respondent contended that theimpugned mark, being name of a religious book, cannot become thesubject matter of monopoly for an individual. He further contendedthat the mark â€œRAMAYANâ€ is not a distinctive mark and is devoid ofany distinctive character. The mark is not capable of distinguishingthe goods of one person from those of another. It was also contendedthat the mark â€œRAMAYANâ€ is not registrable since it is the name of afamous and well known religious book. It was also claimed that morethan 20 traders in Patna and many more are using the trade markand thus it has become public juris. In support of the same, learnedsenior counsel placed reliance upon a decision of this Court inNational Bell Co. vs. Metal Goods Mfg. Co. (P) Ltd. and Another 1970 (3) SCC 665. He further submitted that the impugned mark isidentical with the respondentâ€™s mark â€œBADSHAH RAMAYANâ€ which ispending registration and the impugned registration will causeharassment to other traders and purchasing public would be boundto be confused and deceived. Learned senior counsel finally claimedthat the Board was right in setting aside the order dated 31.03.2004passed by the Assistant Registrar of Trade Marks.
- We have carefully gone through the relevant documents and perused the material on record. Discussion:
- The appellant herein filed an application dated 25.08.1994being No. 638073-B in class 3 for registration of a trade markconsisting of the word â€œRAMAYANâ€ with the device of crown in respectof incense sticks (agarbatties) and perfumeries etc. The appellantherein claimed the user since 01.01.1987. He further filed a requestto rectify the user from 01.01.1981 which was allowed by theAssistant Registrar of Trade Marks. While opposing the application inclass 3 for registration of the trade mark, the respondent herein fileda notice of opposition under Sections 9, 11(a), 11(b), 11(e), 12(1) and18(1) of the Act. He claimed the use of the trade mark â€œBADSHAHRAMAYANâ€ prior to the appellant herein. The respondent herein putforth an objection that the impugned mark, being name of a religiousbook, cannot become the subject matter of monopoly for anindividual. He further added that his application for the registrationof the same trade mark claiming user since 05.11.1986 is pending forregistration. The application was further opposed with the reasoningthat it carries a large sentimental value for the people and therefore,no one can claim sole right to the use of such a word. It was alsoadmitted by the respondent herein that more than 20 traders inPatna are using the trade mark â€œRAMAYANâ€. Finally, it was submitted that the impugned mark is identical with the respondentâ€™smark â€œBADSHAH RAMAYANâ€ which is pending registration and theimpugned registration will cause confusion among general public.Though the Assistant Registrar of Trade Marks dismissed theapplication filed by the respondent herein, the Board set aside thesaid order after holding that the trade mark â€œRAMAYANâ€ is notdistinctive of the goods of the appellant as it is being used as a markfor the same products by more than 20 traders in Patna and indifferent parts of the country and has become public juris andcommon to the trade.
- In view of the above, it is relevant to mention Section 9 of the Actwhich reads as under:-
â€œ9. Absolute grounds for refusal of registration â€“ (1) The trademarks â€“
(a) which are devoid of any distinctive character, that is to say,not capable of distinguishing the goods or services of oneperson from those of another person;
(b) which consist exclusively of marks or indications which mayserve in trade to designate the kind, quality, quantity, intendedpurpose, values, geographical origin or the time of productionof the goods or rendering of the service or other characteristicsof the goods or service;
(c) which consist exclusively of marks or indications whichhave become customary in the current language or in the bonafide and established practices of the trade,
shall not be registered:
Provided that a trade mark shall not be refused registration if beforethe date of application for registration it has acquired a distinctivecharacter as a result of the use made of it or is a well-known trade mark.
(2) A mark shall not be registered as a trade mark if â€“
(a) it is of such nature as to deceive the public or causeconfusion;
(b) it contains or comprises of any matter likely to hurt thereligious susceptibilities of any class or section of the citizensof India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names(Prevention of Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consistsexclusively of â€“
(a) the shape of goods which results from the nature of thegoods themselves; or
(b) the shape of goods which is necessary to obtain a technicalresult; or
(c) the shape which gives substantial value to the goods.
Explanation. â€“ For the purposes of this section, the nature of goods orservices in relation to which the trade mark is used or proposed to beused shall not be a ground for refusal of registration.â€
This section stipulates that the trade marks which are devoid of anydistinctive character or which consist exclusively of marks orindications which may serve in trade to designate the kind, quality,quantity, intended purpose, values, geographical origin or the time ofproduction of goods or rendering of the services or othercharacteristics of the goods or service or which consist exclusively ofmarks or indications which have become customary in the current10 language or in the bona fide and established practice of the tradeshall not be registered, unless it is shown that the mark has in factacquired a distinctive character as a result of use before the date ofapplication. It also provides that a mark shall not be registered astrade marks if (i) it deceives the public or causes confusion, (ii) itcontains or comprises of any matter likely to hurt the religioussusceptibilities, (iii) it contains scandalous or obscene matter, (iv) itsuse is prohibited. It further provides that if a mark consistsexclusively of (a) the shape of goods which form the nature of goodsthemselves, or (b) the shape of goods which is necessary to obtain atechnical result, or (c) the shape which gives substantial value of thegoods then it shall not be registered as trade mark.
- From Clause 13.3 of the Eighth Report on the Trade Marks Bill,1993 submitted by the Parliamentary Standing Committee, we findthat the Committee expressed its opinion that any symbol relating toGods, Goddesses, places of worship should not ordinarily beregistered as a trade mark. However, the Committee did not want todisturb the existing trade marks by prohibiting their registration as itwill result in a chaos in the market. At the same time, the Committeetrusted that Government will initiate appropriate action if someonecomplaints that a particular trade mark is hurting his religious susceptibilities. This report was presented on 21.04.1994. When thereport was presented, the appellantâ€™s trade mark had not beenregistered and the application filed by the respondent herein opposingits registration was dismissed only on 31.03.2004 by the AssistantRegistrar of Trade Marks.
- The word â€œRAMAYANâ€ represents the title of a book written byMaharishi Valmiki and is considered to be a religious book of theHindus in our country. Thus, using exclusive name of the bookâ€œRAMAYANâ€, for getting it registered as a trade mark for anycommodity could not be permissible under the Act. If any other wordis added as suffix or prefix to the word â€œRAMAYANâ€ and the alphabetsor design or length of the words are same as of the word â€œRAMAYANâ€then the word â€œRAMAYANâ€ may lose its significance as a religiousbook and it may be considered for registration as a trade mark.However, in the present case, we find that the appellant had appliedfor registration of the word â€œRAMAYANâ€ as a trade mark. We also findthat in the photographs, after adding â€œOMâ€™sâ€ to the word â€œRAMAYANâ€,at the top and in between â€œOMâ€™s and RAMAYANâ€, the sentence, â€œThreeTop Class Aromatic Fragranceâ€, is also written. Thus, it is not a casethat the appellant is seeking the registration of the word â€œOMâ€™sRAMAYANâ€ as a trade mark. Further, from the photographs, we find that the photographs of Lord Rama, Sita and Lakshman are alsoshown in the label which is a clear indication that the appellant istaking advantage of the Gods and Goddesses which is otherwise notpermitted.
- In National Bell Co. (supra), this Court has held that thedistinctiveness of the trade mark in relation to the goods of aregistered proprietor of such a trade mark may be lost in a variety ofways e.g. by the goods not being capable of being distinguished as thegoods of such a proprietor or by extensive piracy so that the marksbecome public juris. The principle underlying clause (c) of Section 32is that the property in a trade mark exists so long as it continues tobe distinctive of the goods of the registered proprietor in the eyes ofthe public or a section of the public. If the proprietor is not in aposition to use the mark to distinguish his goods from those of othersor has abandoned it or the mark has become so common in themarket that it has ceased to connect him with his goods, there wouldhardly be any justification in retaining it on the register.
- It has also come on record that the word â€œRAMAYANâ€ is beingused as a mark for the similar products by more than 20 traders inPatna and in different parts of the country, and therefore, it hasbecome public juris and common to the trade.
- There are many holy and religious books like Quran, Bible, GuruGranth Sahib, Ramayan etc., to name a few. The answer to thequestion as to whether any person can claim the name of a holy orreligious book as a trade mark for his goods or services marketed byhim is clearly â€˜NOâ€™.
- Moreover, the appellant has not been able to establish that theword â€œRAMAYANâ€ for which he has applied the trade mark hadacquired a reputation of user in the market inasmuch as, we find thatthere are more than 20 traders in the city using the word â€œRAMAYANâ€as a mark for the similar products and also in different parts of thecountry.
- On a perusal of the artistic work said to have been created, thereis no doubt that both the marks are identical in design, colour,scheme and the reproduction of photographs is in such a mannerthat an ordinary buyer would reasonably come to a mistakenconclusion that the article covered by one brand can be the articlecovered by the other. Both the parties have claimed to bemanufacturing units engaged in certain goods.
- Further, the respondent herein claimed that though he had beenin the business since 1980, he had developed and published theartistic work in 1986 and has also been using the mark as atrademark and claiming use since 1986 whereas the appellant hereinclaimed use of the trademark since 1987. However, by filing anapplication to the concerned authority, the appellant has claimed theuse since 1981. Further, in various pleadings in the Title Suits filedby the respondent herein, the appellant herein has admitted the useand publication of the artistic mark of the respondent before the dateof claim of the first use by the appellant, that is, 1987. From thesefacts, it is clear that the respondent herein was using the artisticmark earlier in point of time to that of the appellant herein.
- In view of the foregoing discussion, we do not find anyirregularity in the order passed by the Board dated 10.01.2005,consequently, the appeal fails and is accordingly dismissed. However,the parties are left to bear their own costs.
OCTOBER 27, 2015.
ITEM NO.1A COURT NO.14 SECTION XVI
S U P R E M E C O U R T O F I N D I A
RECORD OF PROCEEDINGS
Civil Appeal No(s). 2138/2006
LAL BABU PRIYADARSHI Appellant(s)Date : 27/10/2015
AMRITPAL SINGH Respondent(s)
This appeal was called on for pronouncement of
For Appellant(s) Mr. K. V. Mohan, AORFor Respondent(s) Mr. Sohan Singh Rana
Mrs. Bindra Rana, Adv.
For M/s S. S. Rana & Co.
Hon'ble Mr. Justice R.K. Agrawal
pronounced the reportable judgment of the Bench comprising Hon'ble Mr. Justice Ranjan Gogoi and His Lordship.
The appeal is dismissed in terms of the signed reportable judgment.
(R.NATARAJAN) (SNEH LATA SHARMA)
Court Master Court Master
(Signed reportable judgment is placed on the file)