Vishnudas v. The Vazir Sultan Tobacco. Ltd.
366 1996 SCALE (5) 267
Respondent was engaged in the business of manufacturing cigarettes under the brand name “Charminar”. Respondent obtained the registration of the said trade mark in respect of manufacturing tobacco in class 34. Respondent since its incorporation was engaged only in the manufacturing of cigarettes. Appellant was in the manufacturing of quiwam and zarda but post Respondent’s registration and had been using the trade mark “Charminar” on bottles and boxes of the quiwam and zarda. The Appellant also applied for the registration of the trade mark “Charminar”. Respondent objected that trade mark sought by the Appellant is conflicting to the Respondent’s registered trade mark.
Proceedings before Joint Registrar
Joint Registrar of trade marks held that the registration of the trade mark in the favour of the Respondent is qua ‘manufactured tobacco’ which in its ambit also takes the quiwam and zarda, therefore the objection made by Respondent cannot be waived off.
Proceedings before Assistant Registrar
Aggrieved by the decision, Appellant filed two applications before the Registrar of Trade marks, for rectifying the registration of the trade mark of Respondent. The Assistant Registrar ordered that the registered trade mark of Respondent would be rectified by confining the trade mark in respect of cigarettes only.
Proceedings before Learned Single Judge, Madras High Court
Aggrieved by the order of the Assistant Registrar, Respondent approached Learned Single Bench of Madras High Court. The Learned Single Judge held that: the Assistant Registrar has made sub-classification which cannot be made; and it was not necessary to establish user of the trade mark by Respondent and rectification as ordered by the Assistant Registrar would enable the Appellant to pass its products as of Respondent.
Hon’ble Division Bench, Madras High Court
In appeal, the Hon’ble Division Bench also held that the manufacture of cigarettes would come under ‘manufactured tobacco’ and thus the trade mark of Respondent could not be removed or restricted on the ground of non-use regarding goods of different specifications such as quiwam and zarda falling under the class ‘manufactured tobacco’ even if quiwam and zarda had never been manufactured or were intended to be manufactured by Respondent. The said decision of the Division Bench of the Madras High Court was challenged further in the Hon’ble Supreme Court.
- Present case is solely regarding the rectification and does not arise out or relates to any question of infringement of trade mark, passing off. defensive registration, or any other kind of proceedings contemplated by the Trade Marks Act.
- “Manufactured tobacco” which can be consumed in various ways i.e. by chewing, inhaling, or by smoking and the same are its species. Each of these species constitutes articles of different descriptions from the others and each is distinct in character and use, though all of them fall within the same broad class i.e. “manufactured tobacco”.
- Where the class of goods is fuzzy and lacks in any specificity such as “manufactured tobacco” the trade mark should be registered in reference to the particular goods or articles or things falling under the class which the trader or manufacturer is willing to trade. Hence the registration of the trade mark in favor of the Respondent as “manufacture tobacco” was a fundamentally erroneous.
- Rectifying, limiting the Respondent’s mark to cigarettes only would not cause prejudice to Respondent company whereas if such rectification is not carried out, the Appellant will be irreparably prejudice and precluded from getting the trade mark for his goods, quiwam and zarda. Such prejudice is equally occasioned to the other traders or manufacturers dealing in the goods under “manufacture tobacco” other than cigarettes.Such prejudice, pre-emption, and exclusion in rem can not be permitted by trade mark registration.
- Appellant’s Contention would be particularly valid where (a) the registration of the registered trade mark is not a defensive registration and the brand name of the goods under registration is not an “invented word” and the device, logo, or symbol associated with that name and depicting the product is not an invented one and (b) even though the registered trade mark holder obtained the registration for the entire class in which his product falls, but he has neither any bonafide intention to use nor has made any bonafide use of the registered trade mark with any other goods falling within that class, whether within the stipulated statutory periods or beyond them, governing rectification of the Register and imposition of limitations on the ground of non-use concerning registered trade marks.
- No trade mark is or can be granted in respect of a class of goods, such as “manufactured tobacco” without any reference to particular goods or articles or things falling in that class which is traded in or manufactured and in respect of which the applicant trader or manufacturer seeks the trade mark.
- No separate or independent item classification contained in 4th Schedule for cigarettes. Cigarettes can only be brought under the entry ‘manufactured tobacco’ under class 34 of 4th Schedule.
- Under the present Trade Marks Act, registration can be only in the nomenclature, phraseology, and terminology used in the classification, prescribed under the rules.
- Respondent alone is entitled to use the “Charminar” trade mark with respect to the ‘manufactured tobacco’ products in class 34. Therefore, there was no question of proving that Respondent had utilized or had intended to utilize its trade mark for quiwam and zarda.
- All the goods are of the same description, namely, manufacture tobacco.
- The goods are traded from the same channel which is an important consideration in deciding whether the goods are of the same or different description.
- Though the mark is used for the cigarettes under class 34, the manufacturers can not use a similar or identical mark for other goods in class 34 as it will create the confusion or deception in the mind of the consumer that the goods sold under the trade mark have been produced by the Respondent.
- Assistant Registrar, has submitted that for the purpose of registration of the trade mark, apart from the classification as specified in 4th Schedule, no new classification can be made. But a particular good falling under a classification in the schedule may be registered by indicating the broad classification to which the articles in question falls. Such registration will not militate against the provisions of Section 8 of the Trade Marks Act, 1958.
- No evidence has been led by the Respondent that Respondent had really intended or even now intends to manufacture any other product of tobacco other than cigarettes.
- The “class” mentioned in the 4th Schedule may subsume or comprise a number of goods or articles which are separetely identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in class 34 of 4th Schedule of the Trade Marks Rules but within the said class, there are number of distinctly identifiable goods which are marketed separately and also used differently.
- If a trader or manufacturer trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy a monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be ground under the broad classification. Therefore such applications are liable to be rectified by the limit of registration
- It is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only in respect of such articles are intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be comprised.
The court allowed these appeal and set aside the impugned judgment of the High Court of Madras and restore the order of the Assistant Registrar, Madras. The court did not express any opinion of the claim of registration over the trade mark “Charminar” in favor of the Appellant.
Summarised by: Mr. Pramit Rastogi, The ICFAI University, Dehradun