Rajindar Sachar, J.
(1) At the end of argument we announced thedismissal of the appeal. We now proceed to give our reasons for the same.This is an appeal against the order of the learned single judge by which heset aside the order of the Registrar of Trade Marks and allowed the application of the respondent to have their trade mark consisting of the word(SAFIi) registered in Glass 5 in Schedule Iv in respect of medicinal preparation under the Trade and Merchan dise Marks Act, 1958 (to be called theAct). The respondents are well known manufacturers of medicinal preparations amongst others of 'SAFI' a preparation meant for purification of blood
(2) Section 6 of the Act requires the maintenance of a Register ofTrade Mark wherein shall be entered all registered Trade Marks. Section 7 of the Act says that the register shall be divided in two parts called respectively part 'A' and part 'B'. Section 8 of the Act provides that the trade markmay be registered in respect of any or all of the goods comprised in a prescribed Class of goods. The Trade and Merchandise Marks Rule 1959 have beenframed under the Act. Rule 22 provides that for the purpose of registrationof .the trade mark goods shall be classified in Fourth Schedule. The FourthSchedule in dassification of goods item 5 amongst others. mentions pharmacutical. Medicinal preparation admittedly falls under this class.
(3) The respondents applied for registration of the trade mark consisting of the word 'SAFI'. Though, originally the application was made forregistration in part 'A', but as later on it was modified and registration wassought in part 'B' only. We are only concerned with the eligibility for registration in part 'B' of the Register. The Registrar of Trade Mark, however,refused it on the ground that 'SAFI' was a descriptive work having Directoreference to the character and quality of the goods and is not inherentlycapable of distinguishing the applicant's goods within the meaning of Section 9 of the Act. In appeal by the respondent the learned single judge, however,took a different view and held that the word 'SAFI' cannot be held to bedescriptive of the quality or the character of the goods of the respondent andon that finding he granted to the respondent trade mark to be registered inpart 'B' of the register. The Registrar of Trade Mark being aggrieved hascome up in appeal.
(4) Section 9(1) lays down the requisites for registration in Parts 'A'and 'B' of the register and by Clause D provides that a trade mark shall notbe registered in Part 'A' of the register unless it contains or consists of at leastone or more words having no direct reference to the character or quality ofthe goods. Thus, this is a negative mandate which means that no trade markwill be registered in Part 'A' of the register if it contains a direct reference tothe character or quality of the goods. Though the trade mark was sought tobe got registered in Part 'B', the discussion before the learned single judgeseems to have proceeded as if the trade mark was being sought to be registeredin Part 'A' of the Register. The learned judge, thereforee, only consideredwhether the word was descriptive of quality of goods and having found thatthe word 'SAFI' was not understood in common use and in its ordinarymeaning as meaning 'pure, clear, fine,' naturally found no hurdle in respondent's getting registration.
(5) As before the learned judge, Mr. Anand, the learned counsel forthe respondent also tried to convince us to hold that the Word 'SAFI' is anunusual word, totally unknown in the common parlance and has no Directoreference to the character or quality of the goods of the respondent. Thoughthe learned judge ultimately held that the word 'SAFI' is not descriptive, yethe did say that prima facie it could be urged that the word 'SAFI' is descriptive in character. That the word 'SAFI' in dictionaries is defined as 'pure,fine, clear' cannot be disputed. There is also equally no doubt that it is notthe only meaning of the word 'SAFI' and as it was even noticed by the Registrar the word 'SAFI' also means cloth which is used for straining beveragesand medicines. Mr. Anand) the learned counsel for the respondent has shownus extracts from a number of dictionaries which show 'SAFI' to mean a smallcloth meant for cleaning hand, one dictionary gives its meaning as duster.The learned judge apparently because of the various meanings attributed tothe word 'SAFI' was not satisfied that this word in common parlance meanonly a pure and clear and thus the word 'SAFI' cannot be held descriptive ofthe quality of the goods of the trader. Now, even Mr. Anand did not disputethat if the word used was 'SAFAI' or 'SAF' which also means pure, 'clear',he could not dispute that these words would have direct reference to thecharacter and quality of the goods of the respondent. In that sense it wouldimmediately come within the prohibition of Section 9(1)(d). He, however,maintained that. the word 'SAFI' though resembling to the word 'SAFAI' and'SAF' still is so unusual that it cannot be said to be descriptive. Frankly, weare not very sure that it can be straight way accepted that the word 'SAFI'is so unusual and so uncommon in the trade that it will not denote a resemblance to the word 'SAFAI' or 'SAF' so as not to fall within the prohibitionof Section 9(1)(d), as being a word descriptive in character. But we do notpropose to give any final opinion on this aspect because we are concernedonly with the question whether the respondent was entitled to have his trademark registered in Part 'B' of the Register and, thereforee, we would not liketo decide the matter on this ground.
(6) Section 9(4) provides that a trade mark shall not be registered inpart 'B' of the register unless the trade mark in relation to the goods in respectof which it is proposed to be registered is distinctive, or is not distinctive butis capable of distinguishing goods with which the proprietor of a trade markis or may be connected in the course of trade from goods in the case of whichno such connection subsists.............Section 9(5) further reads as under :
'INdetermining whether a trade mark is distinctive or is capableof distinguishing as aforesaid, the tribunal may have regard to theextent to which:(a) a trade mark is inherently distinctive or is inherently capable ofdistinguishing as aforesaid; and(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish, or is infact capable of distinguishing as aforesaid.'
(7) It will, thus, be seen that trade mark in order that it may be registered in part B need not necessarily be distinctive. It is enough if it is capableof distinguishing the goods of the applicant from those of other manufacturersor traders. In the present case the Registrar found as a matter of fact thatthe trade mark 'SAFI' for the medicinal preparation has been used continuously by the respondent for the past more than 20 years. This was about sixyears back when he gave his decision. There was no evidence led before theRegistrar to show that any other manufacturer of medicinal preparation wasalso using the trade mark 'SAFI' for similar goods. There was also no evidence led before the Registrar that the word 'SAFI' has been used by someother trader and the respondents user was with a view to make a dishonestuser of the same so as to take unfair advantage. The evidence was thus clearand unrebutted that in the trade circles the word 'SAFI' is connected to themedicinal preparation which is being sold by the respondent. Though it maywell be open to serious argument whether or not direct reference at all to thecharacter or quality of the goods manufactured by the respondents, this doesnot mean that the Trade Mark 'SAFI' is not capable of distinguishing thegoods of the respondents from others in the trade. It cannot be doubted thatby constant use of the Trade Mark 'SAFI' for such a long time the respondents can legitimately claim that this Trade Mark is almost exclusivelyconnected with their goods. Though the Registrar did say that the word SAFIwas inherently incapable of distinguishing the respondents goods within themeaning of Section 9 of the Act, no reasons have been given in support ofsuch ha finding. The Registrar apparently thought that if the word is descriptive it inevitably and in all circumstances means that it is not capable ofdistinguishing the goods of a particular trader from that of the others. Butthis view is not supportable in law. In every case the question is a questionof fact that is to say, where evidence proves conclusively that descriptive wordhas lost its primary meaning, and has acquired a secondary meaning, it is aquestion of fact whether the registration of that mark will or will not causeconfusion. The word is not merely by reason of the fact that it is a descriptive word incapable of registration. See: In the. matter of an ApplicationJ & P Coats Ltd. for Registration of Trade Mark 53 R.P.C. 355 . Thereare words which have a direct relation to the character and quality ofgoods which nevertheless may lose their primary meaning and acquire in aparticular trade a Secondary meaning as indicating to people interested,whether as traders or as the public in trade, the goods of a particular manufacturer. When that does occur and the evidence shows that the word hasattained a secondary meaning then, in my opinion, the word is registrable asa trade mark. [See : 53 R. P. C. 355 (supra)].
(8) It is, thereforee, possible that there may be some words whichthough they may have reference to the character and quality of goods yethave over a course of period, become associated with the goods of aparticular trader and in that sense they would certainly be capable of distinguishing the goods of a particular trader and which would satisfy the test of S. 9(5) of the Act and would be entitled to be registered in Part 'B' of the register.
(9) As a result we are satisfied that the respondent had made out casethat his trade mark 'SAFI' was capable of distinguishing his goods from thoseof others in the Trade and, thereforee, he was entitled to claim registration inPart 'B' of the register. We, thus, have come to the same conclusion as thelearned single judge, though for different reasons, with the result that theappeal will have to be dismissed which we do but with no order as to costs.