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Anneliese Huckmann Nee Merz and anr. Vs. Registrar of Trade Marks - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberMisc. Petn. No. 10 of 1960
Judge
Reported inAIR1962Bom88; (1961)63BOMLR650
ActsTrade Marks Act, 1940 - Sections 6(1)(C), 6(1)(E), 6(3) and 8
AppellantAnneliese Huckmann Nee Merz and anr.
RespondentRegistrar of Trade Marks
Appellant AdvocateS.B. Shah, Adv.
Respondent AdvocateK.S. Shaveksha, Adv.
Excerpt:
.....-- whether word 'patentex' inherently inadaptable in relation to any goods -- fact that word registered as trade mark in other countries relevant in deciding question of its registrability in india.;for the purposes of section 6(1)(c) of the trade marks act, 1940, a word would not be 'invented' which, with some trifling addition or very trifling variation, still leaves the word one which is well-known or in ordinary use. therefore, the word 'patentex' used in relation to certain goods manufactured by the petitioners cannot be said to be an invention of the petitioners entitling them to register it as a trade mark under section 6(1)(c) of the act, as it has a very close resemblance to the word 'patented' which is in ordinary and common use.;in the matter of an application of..........into account for purpose of considering as to whether it should or should not be registered as a trademark in this country as well. it is significant to note, however, in this connection that this word 'patentex' has not been registered as a trade mark in england and it is also significant to note that our law of trade marks is practically on all fours with the law in england in that behalf. apart from this, the fact that the word has been registered as a trade mark in some other countries of the world cannot assist this court in deciding as to whether that word should be registered as a trade mark under the law prevailing in this country. registration of the word as a trade mark in other countries might have been possible under the laws respectively prevailing in those countries. the.....
Judgment:
ORDER

(1) The question that is raised on this petition is as to whether the word 'Patentex' could be registered as a trade mark in reference to the contraceptives manufactured by the petitioners. The Petitioners have averred in their petition and they had also averred it before the Registrar of Trade Marks that for long many years the contraceptives manufactured by them were marketed in many countries of the world including India under the mark 'Patentex' and that it was only during the period of the Second world War that the goods could not be imported into this country and that, therefore, it was only for that period of time that no sale of those goods took place in this country under the mark 'Patentex'. It was, therefore, contended before the Registrar and also before me by the learned counsel Mr. Shah that the word 'Patentex' was quite different from the word 'Patentex', that it did not describe the quality of the goods to which it was, attached and that, therefore, there could possibly be no objection to the word 'Patentex' being registered as a trade mark in respect of the petitioners' contraceptives. It was urged that the word 'Patentex' was registered as a trade mark in some of the countries of the world and that therefore, that factor should be taken into account for purpose of considering as to whether it should or should not be registered as a trademark in this country as well. It is significant to note, however, in this connection that this word 'Patentex' has not been registered as a trade mark in England and it is also significant to note that our law of trade marks is practically on all fours with the law in England in that behalf. Apart from this, the fact that the word has been registered as a trade mark in some other countries of the world cannot assist this Court in deciding as to whether that word should be registered as a trade mark under the law prevailing in this country. Registration of the word as a trade mark in other countries might have been possible under the laws respectively prevailing in those countries. The question as to whether that word should or should not be registered as a trade mark in this country must, however, be decided with reference to the provisions of the Trade Marks Act obtaining in this country.

(2) In support of the plea that the word 'Patentex' was quite different from the word 'Patented'. Mr. shah contended that the word was a pure invention and that, therefore, it could well be registered as a trade mark under Section 6(1)(C) of the Trade Marks Act. Alternatively, he contended that it was a coined word, that it had no special meaning of any kind at all and that, therefore, also there could not be any objection to this being registered as a trade mark. Lastly, he contended that the word was used as a trade mark for a considerable number of years not only in other countries, by in this country as well and that, therefore, under the proviso to sub-section (3) of section 6 of the Act, the Registrar could not possibly refuse to register the word as a trademark.

(3) Firstly, as to whether the word 'Patentex' is an invention or not, as contended by Mr. Shah, reference may be made with advantage to the observations of Lords Shand in the 'Selio' case, (1898) 15 RFC 476. These observations are as follows:

'There must be invention, and not the appearance of invention only. It is not possible to define the extent of invention required, but the words I think should be clearly and substantially different from any word in ordinary and common use. The employment of a word in such use, with a diminutive or a short and meaningless syllable added to it, or a mere combination of two known words, would not be an 'invented' word; and a word would not be 'invented' which with some trifling addition or very trifling variation, still leaves the word one which is well known or in ordinary use, and which would be quite understood as intended to convey the meaning of such a word.'

Applying the test laid down in the aforesaid observations of Lord Shand it is difficult to hold that the word 'Patentex' is the result of any invention on the part of the Petitioners at all. The word 'Patent' in the English language has got a distinct meaning of its own. 'Patented' is a past tense or a past participle of the verb 'Patent: and 'Patentex' is only the word 'Patented' with its last letter changed into 'X'. Besides, 'Patent' is a word which is commonly used by the people and it has got a meaning of its own which everybody understands. Likewise, 'patented' is a word which is of common use and equally understood by all English knowing people. Can it then be said that the word 'Patentex' is an invention of any kind, or that it is just a word with a slight variation made in the word 'Patented'? As Lord Shand very clearly observes in the aforesaid passage, a word would not be 'invented' which, with some trifling addition or very trifling variation, still leaves the word one which is well known or in ordinary use. In my opinion, that is precisely the case here. There is of much of resemblance between the word 'Patentex' and the word 'Patented' that it is impossible to hold that the word 'Patentex' would have any meaning other than the one attached to the word 'Patented' or, or that it is clearly and substantially different from the word 'Patented' which is indisputably in ordinary and common use. Accordingly in my opinion, Mr. Shah's contention that the word 'Patentex' is an invention of the Petitioners cannot be sustained.

(4) Then, turning to the text argument of Mr. Shah that if the word 'Patentex' was not an invention, it was certainly a coined word which was not descriptive of the petitioners' contraceptives nor had any meaning of its own and, therefore, it could be registered as a trade mark, I am not prepared to accept it either. It is a fallacy to say that the word 'Patentex' which is entirely based upon and coined out of he word 'Patented' with the only variation in the last letter 'd' in the word 'Patentex' has no meaning at all. To my mind, it means the same, as already stated above, as the word 'Patented' and it is also the phonetic equivalent of that word. As has been held by the House of Lords in Electric Ltd v. Electrolux Ltd., (1959) 3 All ER 170, 'the phonetic equivalent of a word which is unregistrable as a trade mark is itself unregistrable'. In that case the question was as to whether the word 'Electrix' could be registered as a trade mark in relation to the electric goods which the company in that case was manufacturing and dealing in. It was contended on behalf of the company that the word 'Electrix' was invented by itself and that it neither had any relation with the word 'Electric' nor did it describe the goods that it was manufacturing. It was accordingly claimed that the word 'Electrix' was capable of being registered as a trade mark and should be registered. This contention, however, was rejected first by the Court of Appeal and then, by the House of Lords saying that inasmuch as the word 'Electric' itself could not be registered as being descriptive of the goods which were being manufactured by the company the word 'Electrix' also could not be registered because, not only the word 'Electrix' represented a slight variation in the word 'Electric' but also it was phonetic equivalent of the word 'electric'. As in that case, so in this, the resemblance between the two words 'Patented' and 'Patentex' is so over close that they cannot possibly be distinguished from each other. The word 'Patentex', therefore, suffers from the inherent vice of having very close resemblance to the word 'Patented' and, therefore, if the word 'Patented' is unregistrable as a trade mark the word 'Patentex' would be equally unregistrable as such.

(5) Turning to the next contention of Mr. Shah that the word 'Patentex' was a mark which was distinctive in its character by reason of its long association with the Petitioners' contraceptives as contemplated by clause (e) of sub-section (1) of Section 6, provisions of sub-section (2) of section 6 of the Trade Marks Act which explains the expression 'distinctive' may first be noted. That sub-section provides as follows:

'For the purposes of this section, the expression 'distinctive' means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally, or where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.'

Mr. Shah further relied upon sub-section (3) of section 6 for the purposes of showing that the mark 'Patentex' was adapted to distinguish the petitioners' contraceptives and that by reason of its continuous user for a series of years the Registrar could not refuse to register it as a trade mark. Now, there are two answers to this contention. Firstly, it is conceded by Mr. Shah for the petitioners that the word 'Patent' or the word 'Patented' is inherently inadaptable in relation to any goods for the purpose of a trade mark, and quite rightly so. The word 'Patent' conveys a meaning that the thing in relation to which it is spoken of is a product of some patented process. Likewise, the word 'Patented' means that the thing in relation to which it is spoken of, has been manufactured by a process in respect of which a patent is granted by the authorities. Now, any trader is entitled to have a patent in respect of a process which he might invent, produce goods by operating that invention and call the goods to produced 'patented' goods. It is therefore, obvious that neither the word 'Patent' nor the word 'Patented' could ever be adapted in relation to goods of any person in order to distinguish them from those of others within the meaning of clause (e) of sub-section (1) of section 6, and neither of them could be registered as a trade mark in relation to any goods. As already held by me, the word 'Patentex' is indistinguishable from and has the same meaning as the word 'Patented'. Consequently, that word, too, is as inherently inadaptable in relation to any goods as the word 'Patented', and cannot be registered as a trade mark.

(6) In this view of the matter, it is needless, in my opinion, to further examine the question as to whether the petitioners' case at all improves on account of the fact that they were using this word in connection with their contraceptives over a large number of years in this country. Assuming, however, that, instead of being inherently inadaptable as aforesaid, the word 'Patentex' is capable of being registered as a trade mark, the proviso to sub-section (3) of section 6 clearly requires the user of the mark during a period from a date prior to the 25th day of February, 1937, to the date of the application for registration. The application for registration of the mark 'Patentex' in this case was made on 11th March, 1959 and it was obligatory upon the petitioners to show to the Registrar that they were using the word as a trade mark from the date prior to the 25th February 1937 to the date of the application as aforesaid. Mr. Shah, however, conceded that during the years of the Second World War no contraceptives of the petitioners were at all marketed in this country under the trade mark 'Patentex'. Obviously, therefore, the provisions of the proviso to sub-section (3)- of section 6 of the Act are not complied with Mr. Shah, however, contended that the time taken up by the War should be excluded from consideration altogether, because it was not on account of the petitioners' fault that the goods could not be imported into this country and marketed. I see no warrant for this kind of exclusion in the Proviso at all. We cannot read in it anything more than what it provides. According to the proviso as it stands, and also the rest of the sections of the Act, no exclusion of the kind contended for by Mr. Shah thus been allowed. Accordingly, as Mr. Shah has been unable to show a continuous user of the word 'Patentex' as a trade mark during the years of the Second World War, he cannot compel the Registrar to register the word 'Patentex' as a trademark under the provisions of the Act. As a matter of fact, this part of Mr. Shah's argument has no foundation at all, because he himself conceded in course of his arguments that the word 'Patent' as well as the word 'Patented' were both inherently inadaptable in relation to any goods so as to distinguish them from others and could never be registered as a trade mark in relation to any goods. On this concession, it could not possibly be contended that either of these two words is not inherently inadaptable, but that, on the contrary, they are both capable of being registered as trade marks and that, therefore, on proof of the user of either of those words as a trade mark in relation to any goods during the period specified in the proviso as aforesaid, the Registrar could not refuse to register it as a trade mark.

(7) There is yet another reason why the word 'Patentex' cannot be registered under the Trade Marks Act. It is admitted on behalf of the petitioners that for several years the Petitioners' contraceptives were being marketed in this country under the mark 'Patentex'. In fact, the Petitioners' goods used to be described as 'Patentex' contraceptives. Normally, this expression would convey to a lay-man that the petitioners' contraceptives were prepared by some patented process. It is, however, admitted on behalf of the petitioners that no process for manufacturing contraceptives has been patented by them. In these circumstances, obviously the petitioners can well be said to have committed deception upon those who went in for their contraceptives. The Petitioners by using the word 'Patentex' before the word 'contraceptives' intended the consumers to believe that their contraceptives were prepared under a patented process which was not a fact at all. In these circumstances, the case would fall under Section 8 of the Trade Marks Act which provides as follows:

'No trade mark nor part of a trade mark shall be registered which consists of or contains, any scandalous design, or any matter the use of which would-

(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of Justice. . . . . .'

by virtue of this provision, therefore, the petitioners would be disentitled to claim any registration of the word 'Patentex' as a trade mark in respect of their contraceptives. Mr. Shah however, contended that Section 8 did not come into operation in this case for the simple reason that it deals with disentitling a person who would be otherwise entitled to have a mark registered as a trademark. According to him, if the words 'Patent' and 'Patented' were inherently inadaptable in relation to anything to distinguish it, nobody would be entitled to have either of those two words registered as a trade mark and that therefore, section 8 would not come into operation at all. I accept this argument. But the unfortunate part of the arguments advanced on behalf of the petitioners in this case was that the learned counsel Mr. Shah chose to argue before me that the word 'Patented' was registrable as a trade mark by reason of the provisions of the proviso to sub-section (3) of Section 6 of the Act. Now, those provisions would be applicable only in a case where a mark is capable of registration and Mr. Shah argued on the footing, in spite of his concession that both the words 'Patent' and 'Patented' were inherently inadaptable in relation to anything to distinguish it and hence unregistrable, that the mark 'Patentex' being distinct from 'Patented' was capable of being registered in this case on account of its long user. I have already held above that even on that basis the Petitioners failed to prove a continuous user thereof for the period specified in that proviso and, therefore, it could not be registered as a trade mark under that proviso. Assuming that the petitioners were successful in showing that their case was governed by sub-section (3) of Section 6 of the Act, a question might still be raised in the light of the circumstances of the case as to whether, in spite of it, the petitioners were entitled to the registration of the word 'Patentex' as a trade mark in view of the provisions of Section 8 of the Trade Marks Act. As I have held above, even though the petitioners might have been entitled to have the word 'Patentex' registered as a trade mark under the provisions of sub-section (3) of Section 6 they were completely disentitled to so have it on account of the fact that by using the word 'Patentex' before the word 'contraceptives' they were practising a deception upon or at any rate causing confusion in the minds of the consuming public, to the effect that, though as a matter of fact their contraceptives were not manufactured by any patented method, they were so manufactured. The Registrar of the Trade Marks, in my opinion, was perfectly justified in refusing to register the word 'Patentex' as a trade mark in relation to the Petitioners' contraceptives. I wholly agree with the reasons set out by him in his judgment and I see no reason to differ from any of them at all. The order that he has passed, in my opinion, is perfectly justified under the provisions of the Act and the reasons he has set out are perfectly cogent and convincing. There is, therefore, no substance in the present petition filed by the Petitioners against his order in this Court and it is accordingly dismissed with costs.

(8) Petition dismissed.


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