1. The appellants filed an application before the Assistant Registrar of Trade Marks, Delhi, for registration of the trade mark consisting essentially of the word 'Janta' in respect of electric torches. The application was advertised in the Trade Marks Journal. Although no objections were filed by any one against the registration of the appellant's trade mark, the learned Assistant Registrar declined to register the appellant's trade mark mainly on the ground that it was not either distinctive or capable of distinguishing. The appellant seeks to challenge the said order of the learned Assistant Registrar.
2. The learned Assistant Registrar was of the view that the word 'Janta' was phonetically akin to the word 'Janta' which was word of common use and which was neither distinctive nor capable of distinguishing the goods of the appellant. The learned counsel for the appellant contended that the word 'Janta' is quite distinct from the word 'Janta' and that in Hindi the word 'Janta' meant knowledge and that it was in that sense that the word was used in the appellant's proposed trade mark. There is hardly any substance in this contention. When an objection was raised by the office of the registrar that the word 'Janta' had a direct reference to the character or quality of the goods and was not distinctive the appellant in its letter dated July 25. 1961 admitted that the word 'Janta' has a dictionary meaning as 'people' but proceeded to state that it did not have any direct reference to the character or quality of the goods on which it was used. Further in some of the documents filed by the appellant, namely, Exs. A-9, A-10, A-22, A-36, A-38 and A-39, which represented invoices and orders for the appellant's goods, the word mentioned is Janta. 'Therefore, the appellant's application for registration of its trade mark must be considered on the basis that the word 'Janta' was equivalent to the word 'Janta'.
3. For a trade mark to be qualified for registration, it should satisfy the conditions laid down in Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). Under sub-section (1) of S. 9.
'A Trade Mark shall not be registered in part A of the Register unless it contains or consists of at least one of the following essential particulars, namely :- X X X X X X X X X X X X
(d) one or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India:
(e) any other distinctive mark'.
Under sub-section (2) of S. 9-
'A name, signature or word other than such as fall within the descriptions in clauses (a). (b). (c) and (d) of sub-section(1) shall not be registerable in part A of the register except upon evidence of its distinctiveness'.
The effect of clause (d) of sub-section (1) and sub-section (2) is that if the word in that trade mark has direct reference to the character or quality of the goods, then, it shall not be registered. According to the learned Assistant Registrar, the word 'Janta' has a direct reference to the character or quality of the goods, because the goods bearing such a name indicate that they are cheap in price and meant for the common man. The appellant admittedly manufactures electric torches of various qualities and the torches bearing the name 'Janta' are the cheapest. But these facts do not necessarily lead to the conclusion that the word 'Janta' is descriptive of the character or quality is descriptive of the character or quality of the goods. The price is undoubtedly one of the factors which will be considered by the purchaser but the price consideration would be the utility of the goods. If the goods are of poor quality and do not serve any useful purpose, then no one would purchase the goods notwithstanding the low price. The figures of sales of the appellant's 'Janta' torches which even according to the learned Assistant Registrar are quite impressive, indicate that these torches have given satisfactory performances and it is for that reason that they are in such demand in the market. I am, thereforee, unable to agree with the view of the learned Assistant Registrar that the word 'Janta' has a direct reference to the character or quality of the goods. thereforee, the proposed trade mark of the appellant does not come within the mischief of Clause (d) and is, thereforee, not disqualified for registration under sun-section (2) of Section 9 of the Act.
4. The appellant's application being one for registration of its trade mark in Part B of the Register, the said trade mark is disqualified from registration under sub-section (4) of S. 9 unless it is distinctive but is capable of distinguishing goods with which the proprietor of a 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 limitation, in relation to use within the extent of the registration. According to the learned Assistant Registrar, the word 'Janta' being a word of common use is neither distinctive nor is capable of distinguishing the goods of the appellant. Under sub-section (5) of S. 9-
'In determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which- (a) a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and
(b) by reason of the use of trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid'.
There is no difficulty in agreeing with the learned Assistant Registrar that the word 'Janta' is not inherently distinctive or inherently capable of distinguishing. But the learned counsel for the appellant seeks to rely upon clause (b) of sub-section (5) of S. 9 of the Act which, according to him permits the registration of a trade mark which by reason of its use is in fact adapted to distinguish or is in fact capable of distinguishing the appellant's goods. In this connection, learned counsel points to the following observations to the learned Assistant Registrar:-
'The total turnover for the period from 1952 to 1961 is of the order of over rupees 23 lacs which is quite impressive for a low priced consumer article like electric torch X X X. The Documentary evidence filed in support of user and advertisement consists of a large number of orders and invoices covering the advertisement cuttings from newspapers. These exhibits clearly show that the applicants have been selling torches under the name 'Janta' from 1951 onwards and have also advertised it very extensively all over India in various newspapers in different languages X X X. The evidence before me shows that the trade mark 'Janta' by virtue of extensive use has in fact come to denote the goods of the applicants to the traders and dealers in electric torches'.
On the basis of the above observations, the learned counsel contends that the word 'Janta' has been associated by the public with the torches produced by the appellant and that, thereforee, by reason of the use of the trade mark, it had in fact become adapted to distinguish or capable of distinguishing the appellant's goods within the meaning of clause (b) of sub-section (5) of S. 9.
5. In support of this contention, the learned counsel has also referred to a decision of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma V. Navaratna Pharmaceutical Laboratories. : 1SCR737 . That was, however, a case that was decided under the Trade Marks Act, 1940 which contained the following proviso to Section 6 of the said Act:-
'Provided that in the case of a trade mark which has been continuously used (either by the applicant for the registration or by some predecessor in his business, and either in its original form or with additions or alterations not substantially affecting its identity) in relation to which registration is applied for, during a period from a date prior to the 25th day of February, 1937, to the date of application for registration, the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration'.
It was because the facts of the case before the Supreme Court fell within the scope of this proviso that registration was granted notwithstanding the finding that the word sought to be registered was neither inherently distinctive nor inherently adapted to distinguish. This decision will, thereforee, not help the appellant. On the other hand, some of the observations of the Supreme Court in that case go against the appellant's contention.
6. Their Lordships quoted with approval the following observations of Fry, L.J. in the case of In Re: Dunn, (1888) 6 Rpc 379:-
'It is said that the words 'Fruit-Salt' have never been used in collocation except by Mr. Eno. Be it so X X X X I cannot help regarding the attempt on Mr. Eno's part as an instance of that perpetual struggle which it seems to me is going on to enclose and to appropriate as private property certain little strips of the great open common of the English Language. That is a kind of trespass against which I think the courts ought to set their faces'.
In the present case also, by seeking a monopoly to use the word 'Janta' in its trade mark, the appellant is attempting to enclose and to appropriate as private property certain little strips of the great open common of the Hindi Language. Their Lordships again quoted with approval the following observations of Lord Simon in Yorkshire Copper Works Ltd's Application for a Trade Mark. (1954) 71 Rpc 150:-
'I am content to accept the statement reiterated by their learned counsel that the mark had acquired 100 per cent distinctiveness X X X X X. I must express my emphatic dissent from the proposition which was strenuously urged by counsel for the appellants that distinctiveness in fact is conclusive X X X X X X X. In my opinion the decisions of this house in W and G case. 1913 Ac 624 and the Glastonbury case 1938 Ac 557 are fatal to this proposition and I an content to accept as accurate the clear exposition of those cases given by the learned Master of the Rolls in the present case. X X X X X X just as a manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim for his own territory, whether country, county or town, which may be in the future, if it is not now, the seat of manufacture of goods similar to his own'.
The trade mark which was sought to be registered in that case was 'Navarathana'. This trade mark was refused registration on the ground that it did not satisfy the conditions laid down in Section 6 of the Trade Marks Act 1940 which is in part materia with Section 9 of the Act except for the proviso to Section 6 of the former Act which is omitted in Section 9 of the Act. Their Lordships observed that -
'If the matter had to be decided in terms of Section 6(1) alone without reference to the terms of the proviso to sub-section (3) X X X X X we see great force in the submission of the learned counsel'.
And again at another place, their Lordships observed as follows :-
'The learned counsel is thereforee right in his submission that if the right of the respondent to the registration of his mark had to be considered solely on the terms of Section 6 (1), the appellant's submissions as regards the non-registrability of the respondent's mark would have great force'.
7. As a result of the above discussion, it must be held that although the appellant had led evidence to prove that its torches bearing the name 'Janta' have acquired considerable reputation in the market, still the word 'Janta' is in fact not adapted to distinguish or is in fact not capable of distinguishing the appellant's goods.
8. Further, even if the appellant's proposed trade mark satisfies the conditions prescribed in Section 9 of the Act, the appellant is not entitled as a matter of right to the registration of his trade mark. It is still open to the Registrar to decline to register the appellant's trade mark in the exercise of his discretion under Section 18(4) of the Act. This exercise has undoubtedly to be exercised jurdicially and not capriciously or arbitrarily. But in this case the learned Assistant Registrar has given his reasons for exercising his discretion against the appellant. He has observed that the word 'janta' in India has a special significance and it is used very widely in various situations to denote or connote people or the common man and that the word 'Janta' is one of those words which should be kept open for the use of any person for a bona fide descriptive or trading purposes and that the appellant should not get monopoly right over this word. In my view, these are valid grounds for exercising the discretion vested in the Registrar under S. 18(4) or the Act against the registration of the appellant's trade mark and I do not see any justifiction for interfering with the discretion of the learned Assistant Registrar.
9. In the result, the appeal is dismissed, but there shall be no order as to costs.
10. Appeal dismissed.