LAL BABU PRIYADARSHI V. AMRITPAL SINGH

Lal Babu Priyadarshi v. Amritpal Singh

2015 (12) SCALE 76

Brief Facts:

An application for registration of trademark “RAMAYAN” with the device of crown in class 3 was filed by the Appellant in respect of incense sticks (agarbattis, dhoops) and perfumeries etc. The said application was opposed by the Respondent before the Registrar of Trade marks claiming that the impugned mark, being the name of a religious book, cannot become the subject matter of monopoly for an individual.

The Assistant Registrar of Trademarks, after holding that the impugned trademark consists of device of crown and the word “RAMAYAN” is capable of distinguishing the goods. The Assistant Registrar of Trademarks also noted that the word “RAMAYANA” is not included in the list of marks not registrable under the Act. Consequently, the application of the Respondent was dismissed. Respondent appealed before the IPAB. The IPAB, however, set aside the order of the Assistant Registrar of Trade Marks and aggrieved, the Appellant has filed this appeal by way of special leave.

Arguments on behalf of Appellant:

• The goods under the trademark “RAMAYAN” have been advertised by him since 1981 and have become distinctive in such a manner that use of the same or similar trademark or carton by any other person will cause confusion and deception in the trade and amongst the public.

• The fact that the trademark, being the name of a religious book, cannot be a sufficient ground for refusal of registration under Section 9(2) of the Act and is not based on evidence on record that the feelings of the Hindus having been hurt by its use in relation to incense sticks.

• The Board has erroneously relied upon the decision of this Court in Registrar of Trademarks v.Ashok Chandra Rakhit; AIR 1955 SC 558 by proceeding on the basis that the said case was an authority on the question that all religious names or symbols are prohibited from being registered whereas the fact of the matter is that this Court had merely upheld the concurrent findings of the Registrar and the High Court that the word ‘SHREE’ was incapable of distinguishing the goods of any one trader. The said case is also distinguishable by the fact that it was the invariable practice of the trademark office not to register the word ‘SHREE’ but this is not so with the word “RAMAYAN”.

Arguments on behalf of Respondent:

• The impugned mark, being name of a religious book, cannot become the subject matter of monopoly for an individual.

• The mark “RAMAYAN” is not a distinctive mark and is devoid of any distinctive character.

• The mark “RAMAYAN” is not registrable since it is the name of a famous and well known religious book. More than 20 traders in Patna and many more are using the trademark and thus it has become public juris.

Issue:

Whether the registration of the word “RAMAYAN” as a trademark, being the name of a Holy Book of Hindus, is prohibited Under Section 9(2) of the Trademarks Act, 1999?

Court’s Observations:

• Section 9 of the Act stipulates that the trademarks which are devoid of any distinctive character or which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of goods or rendering of the services or other characteristics of the goods or service or which consist exclusively of marks or indications which have become customary in the current language or in the bona-fide and established practice of the trade shall not be registered, unless it is shown that the mark has in fact acquired a distinctive character as a result of use before the date of application. It also provides that a mark shall not be registered if it contains or comprises of any matter likely to hurt the religious susceptibilities

• From Clause 13.3 of the Eighth Report on the Trademarks Bill, 1993 submitted by the Parliamentary Standing Committee, it is found that any symbol relating to Gods, Goddesses, places of worship should not ordinarily be registered as a trademark. However, to avoid disturbing the existing market by prohibiting their registration, the Government is entrusted with the responsibility of initiating appropriate action if someone complaints that a particular trademark is hurting his religious susceptibilities.

• In National Bell Co. vs. Metal Goods Mfg. Co. (P) Ltd. and Anr.; 1970 (3) SCC 665, this Court has held that the distinctiveness of the trademark in relation to the goods of a registered proprietor of such a trademark may be lost in a variety of ways e.g. by the goods not being capable of being distinguished as the goods of such a proprietor or by extensive piracy so that the marks become public juris. In this respect, more than 20 traders are using the mark “RAMAYAN”.

• Word “RAMAYAN” represents the title of a book that is considered to be a religious book of the Hindus in our country. Thus, using exclusive name of the book “RAMAYAN”, for getting it registered as a trademark for any commodity could not be permissible under the Act. If any other word is added as suffix or prefix to the word “RAMAYAN” and the alphabets or design or length of the words are same as of the word “RAMAYAN” then the word “RAMAYAN” may lose its significance as a religious book and it may be considered for registration as a trademark.

Author: Aasawari Dogra, Army Institute of Law, Mohali