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Lakshminarayan Karva and ors. Vs. Satyanarayan Khubchand Karva and anr. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai High Court
Decided On
Reported in(1970)2MLJ275
AppellantLakshminarayan Karva and ors.
RespondentSatyanarayan Khubchand Karva and anr.
Cases ReferredTeofani & Co. Ltd. v. A. Teofani
Excerpt:
.....distinctiveness :e. this insertion does not show that manufacture of ammonium chloride under rlk trade mark or the trade therein had commenced in july, 1961. nor does it whittle down the disastrous nature of the admission made in the appellant's reply notice dated 23rd february, 1963, that no ammonium chloride was being manufactured at all by them. the appellants have complained in paragraph 12 of the plaint in that suit that they have suffered very much on account of the first respondent introducing the goods under an imitation trade mark, and that the continued use of the trade mark by the first respondent would cause the appellants incalculable and irreparable injury, which no amount of money could adequately compensate. on the other hand, the first respondent has in his written.....s. maharajan, j.1. this is an appeal filed by the registered proprietors of the trade mark bearing no. 217448 against the order of the assistant registrar of trade marks, madras, allowing the first respondent's application under sections 46 and 56 of the trade and merchandise marks act, 1958, for rectification of the register by expunging the said mark from the trade marks register.2. lakshminarayan karva, balakrishna karva, harikishan karva and srikishan karva have been partners carrying on business under the name and style of rama-chandra lakshminarayan karva at begum bazaar hyderabad, andhra pradesh. the application for registration of the impugned trade mark was made on 30th august, 1963. in the affidavit in support of the application it was affirmed that the trade mark was first.....
Judgment:

S. Maharajan, J.

1. This is an appeal filed by the registered proprietors of the trade mark bearing No. 217448 against the order of the Assistant Registrar of Trade Marks, Madras, allowing the first respondent's application under sections 46 and 56 of the Trade and Merchandise Marks Act, 1958, for rectification of the register by expunging the said mark from the Trade Marks Register.

2. Lakshminarayan Karva, Balakrishna Karva, Harikishan Karva and Srikishan Karva have been partners carrying on business under the name and style of Rama-chandra Lakshminarayan Karva at Begum Bazaar Hyderabad, Andhra Pradesh. The application for registration of the impugned trade mark was made on 30th August, 1963. In the affidavit in support of the application it was affirmed that the trade mark was first adopted or invented by the partnership concern in the year 1956 for use of ammonium chloride (navasagar) in industry, that the said trade mark had been in use continuously exclusively and openly since then without any interference or interruption from any quarters whatsoever, that the goods under the mark were known, advertised, demanded, distributed, sold and supplied as chandtara (moon and star) and also as 'RLK Navasagar', and that goods worth several lakhs of rupees had been sold under the said marks and the trade mark had become very popular and deserved the protection of law.

3. The trade mark consisted of the word 'Salammoniac' appearing in between two symmetrical devices of crescent and star. Within each device of crescent and star the letters RLK were inscribed, in the blank space between the star and the crescent. On the insistence of the Assistant Registrar of Trade Marks the applicants disclaimed the right to the exclusive use of the device of a cresent and star and the expression 'Salammoniac', whereupon the trade mark was accepted for registration by order of the Assistant Registrar on 9th March, 1964, and the application as accepted for registration was advertised in the Trade Marks Journal dated 1st June, 1964. On 27th June, 1966, the first respondent filed an application before the Assistant Registrar of Trade Marks, Madras, praying that the entry in respect of the trade mark No. 217448 be removed from the register. In support of this application the first respondent stated that he had been dealing in ammonium chloride since 1960, that for the purpose of distinguishing his goods from those of other manufacturers, he had been using various trade marks, one of which was label containing devices of two stars and cresents, the letters KCI within the present device and the expression ' Amolo ' in between the two devices, that the mark had been used on cmmonium chloride since 1961, and that if the trade mark No. 217448 continued in the Trade Marks Register it was likely to embarrass or hurt the first respondent. He further contended inter alia, (i) that the user claimed by the registered proprietors (the appellants) was false and registration had been obtained by them by misleading the Assistant Registrar, (ii) that on the date on which the registered proprietors made their application the mark had not been used at all by them and registration was obtained by false statements regarding user; (iii) the registered trade mark No. 217448 was neither distinctive nor capable of distinguishing goods of the registered proprietors and was therefore not registrable under Section 9 of the Act ; (iv) that the mark of the registered proprietors was registered without any bona fide intention on their part and (v) that as the entry relating to the above-mentioned trade mark was made without sufficient cause and was wrongly remaining on the register it should be expugned under Section 56 of the Act.

4. The learned Assistant Registrar of Trade Marks, after giving notice of the application for rectification to the registered proprietors and after receiving evidence of both sides in the shape of affidavits held that there was no proof that the trade mark had become distinctive of the goods of the registered proprietors, that it had been registered without sufficient cause and was wrongly remaining on the register, and should therefore be taken off the register. He also rejected the request of the registered proprietors to have the trade mark transferred to Part B of the registry on the ground that the trade mark was neither adapted to distinguish nor capable of distinguishing. Consequently the application for rectification was allowed and the entry relating to trade mark bearing No. 217448 in Clause I expunged from the register. The Assistant Registrar also directed the registered proprietors to pay costs of the proceedings to the applicants for rectification.

5. It is against this order that the registered proprietors have preferred this appeal.

6. The requisites for registration of a trade mark in parts A and B of the register have been laid down in Section 9 of the Act. That section prescribes that the trade mark shall not be registered in either part of the register unless it contains or consists of at least one of the following essential particulars, namely : (a) the name of a company, individual or firm represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) one or more invented words ; (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 set, caste or tribe in India; (e) any other distinctive mark. Sub-section (2) of the section says that 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 registrable in Part A of the register except upon evidence of its distinctiveness. Sub-section 3 provides that the expression 'distinctive' in relation to the goods in respect of which a trade mark is proposed to be registered, means adapted to distinguish 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. Clause 4 of the section provides that a trade mark, shall not be registered in Part B of the register unless it is distinctive in relation to the goods in respect of which it is proposed to be registered or if it is not distinctive, that it 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. Clause 5 of the section provides that 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 (6) 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 in fact capable of distinguishing as aforesaid.

7. It is in the light of these provisions that we have to examine whether the trade mark in question is registrable either in Part A or in Part B of the registry. Of the different components of the trade mark in question, the word 'salammonaic' and the two devices of crescent and star were considered to be non-distinctive in character and under Section 17 of the Act, the Tribunal, held that the appellants were not entitled to the exclusive use of the same, and called upon the appellants even before registration to disclaim any right to the exclusive use of these parts of the trade mark, and the appellants agreed to disclaim the same as a condition of the trade mark being registered. What survives of the trade mark after the disclaimer is only the group of letters RLK.

8. The question arises whether this part of the trade mark is distinctive or is capable of distinguishing within the meaning of Section 9 of the Act. There is nothing inherently distinctive about any of these three letters of the English alphabet. Nor is there anything distinctive about the manner in which these letters have been combined. In Ford Werke A.G.'s Application (1955) 72 R.P.C. 191, the mark consisted of the letters, F and K in interlaced ovals. The surrounding oval device was considered by the Registrar to be registrable per se and he had suggested that if the letters were small compared with the size of the ovals the mark was registrable, subject to a disclaimer of these letters. There had been extensive use abroad of the mark as applied for with the letters F and K more prominently displayed but not in the United Kingdom. It was held that the letters F and K constituted a feature which would strike the eye and fix itself in the recollection to the exclusion of the other features and the mark was not registrable as a new mark in either part of the register. In this case there is not even an interlacing of the letters RLK ; nor are they woven into any distinctive design.

9. In W. & G Du cros Ltd's application (1913) A.C. 624, the applicants had applied for registration of two marks, one consisting of the letters, W and G, in ordinary type, of which mark there had been no use, the other of the same combination of letters in script with a flourish in the tail of the G which was brought back under the whole mark; of the last mentioned mark there had been three years' user in London and the neighbourhood. It was held by the House of Lords that neither of the marks was adapted to distinguish, and that registration of the marks would improperly interfere with the rights of existing or future firms having the initials, W and C to attach the initials of their firm names to their goods. Lord Parker, who delivered the judgment made it clear that in ordinary type the initials ' W and G' were totally unregistrable, and that although the script mark was then and in a particular area distinctive of the applicants' cars, the area within which and the time during which such distinctiveness had existed were in sufficient to displace the opinion that he had formed on more general grounds. In this case it is said that the letters RLK represented the initials of the proprietors. They were not even inscribed with any distinctive flourishes. To register these letters would certainly have the effect of improperly interfering with the rights of existing or future firms having the initials RLK to attach the initials of their firm name to their goods.

10. As pointed out in para. 283 at page 142 of Kerly's Law of Trade Marks, 9th Edition,

Combinations of three or more letters have been registered in fair number, on strong evidence of distinctiveness : e.g., B.S.A. being the initial letters of Birmingham Small Arms, K.M.S., the initial letters of Kalium Meta Sulphite; S.K.F. for ball bearings. Such marks are not however registered without evidence of distinctiveness, and in all these instances there had been long use of the mark.

I therefore agree with the learned Assistant Registrar when he says that it has always been regarded that a trade mark consisting of a letter or letters is a weak trade mark and to be entitled to registration it should have enjoyed wide and extensive circulation to such an extent that to all persons concerned in that particular trade, the letter or letters should have become indicative of the manufacturer and the person using the trade mark.

11. I shall next consider if by reason of long user the trade mark consisting of these three letters in ordinary type has become so closely associated in the mind of the public with the goods of the appellants that it has become eligible for registration in either part of the Trade Mark Registry. The test laid down by Farwell, L.J., in Lea's case was adopted by Kennedy, L.J., in Teofani & Co. Ltd. v. A. Teofani 30 R.P.C. 446 and it is this:

It must be prima facie wrong to allow a mere surname either with or without a prenom to be used as distinctive, because everyone has a prima facie right to trade in his own name, and ought not to be hampered in its use, unless such name has become so completely identified with some article as to be a house-hold word for such article.

It seems to me that the letters RLK are even more colourless and less adapted to distinguish than a surname, and it would be all the more wrong to allow these letters to be used as distinctive unless the letters have become so completely identified with some article in the same way as for instance, the letters BSA have become identified with the cycles manufactured by the Birmingham Small Arms Co.

12. I shall next turn to the evidence on record as to user. I have already referred to the fact that in their application for registration of the trade mark the registered proprietors asserted that they had been using the trade mark in relation to ammonium chloride ever since 1956. That this allegation must be far from true can be established by certain admissions made by the appellants themselves in 1963. On 18th February, 1963 one Manjeet Singh, Proprietor of Manjeet Chemical Industries, issued a notice through his lawyer to the appellants accusing them of passing off ammonium chloride manufactured by him under the Patang trade mark. In this notice he alleged as follows:

That you have not established the necessary machinery for manufacturing the ammonium chloride at your own premises and that you are manufacturing ammonium chloride with ray client's Patang Trade Mark a said above and you are passing off your said goods as the goods of my client.

13. That my client is incurring loss and damages due to your aforesaid illegal and unlawful acts. That I should call upon you, which I hereby do, to desist immediately from manufacturing ammonium chloride or any other substance which can be passed off as ammonium chloride with my client's aforesaid Patang trade mark or any other trade mark similar to that of my client's aforesaid trade mark and to deliver to my client for destruction all the spurious goods containing the aforesaid Patang trade mark which are not with you and the dyes which you are using to emboss or print the said trade mark, within one week from the date of receipt of this notice.'

This notice was wound up with the threat that steps would be taken in civil and criminal Courts for necessary reliefs against the appellants.

14. The appellants sent a reply to this notice through their advocate on 23rd February, 1963. In this reply the appellants stated that they were manufacturing only salt and selling the same in the name of Patang mark for a very long time. They further alleged that they were 'not at all' manufacturing ammonium chloride. It is therefore clear from the admissions made in this notice that even on 23rd February, 1963, the appellants were not manufacturing ammonium chloride at all. No doubt, the appellants have filed an application in C.M.P. No. 13982 of 1969 for reception of additional documents, including Hindi Journal, 'Risala Vyapar' of July, 1961. I allow this petition. The advertisement in this journal does not reproduce the trade mark; nor does it give the impugned initials. The advertisement which is in Hindi is mainly intended to publicise the appellant's commission trade in jaggery. It also adds secondarily that Navasagar under the Chand-tara mark was under preparation by the appellants. This insertion does not show that manufacture of ammonium chloride under RLK trade mark or the trade therein had commenced in July, 1961. Nor does it whittle down the disastrous nature of the admission made in the appellant's reply notice dated 23rd February, 1963, that no ammonium chloride was being manufactured at all by them. Some account books of the appellants have also been produced before me but they do not indicate any user of the initials RLK. The admissions made in the reply notice are further reinforced by a deposition given by one of the appellants, Lakhsminarayan, before the Rent Controller, Hyderabad. It appears that the landlord of Lakshminarayan filed a petition against him under Section 10 of the Andhra Pradesh Buildings (Lease, Rent and Eviction Control) Act, 1960 on 16th November, 1962. In these proceedings Lakshminarayan was examined as R.W. 1 and he stated as follows : 'I do business in jaggery and navasagar....I am doing business in jaggery since 13 years in this mulgi. I know the petitioner. I took his house on lease which is situated at Ghansi Bazar in March, 1961, for establishing a factory of ammonium chloride bars. I executed a rental deed Exhibit P-1 is the same rental deed....For 16 months I could not start the factory. I was having permission for installing the machinery. Now I am running the factory.' This would show that the appellant's ammonium chloride factory did not commence working till about June, 1962. In fact only on 2nd January, 1962, the appellants sent an application to the Municipal Corporation of Hyderabad for running press machines to make ammonium chloride bars and the licence was granted by the Corporation only on 8th August, 1962. The licence says that it would be in force from April, 1962 to the end of March, 1963. As the licence itself was granted only on 8th August, 1962, it seems probable that the appellants did not start working their press machine with 10 H.P. electric motor for the production of ammonium chloride before 8th August, 1962. There is therefore no escape from the conclusion that the allegation made by the appellants in their application for registration that they had been manufacturing ammonium chloride and using this trade mark in connection therewith since 1956 is false, and that if they had manufactured ammonium chloride and sold the same in the market under the impugned trade mark it must have been after August, 1962, that is to say about just one year before the appellants made their application for registration of the same on 30th August, 1963. There is little evidence to show that during this short period the goods produced by the appellants had become associated in the public mind with the letters RLK.

15. Two persons, one claiming to be a tinker and another claiming to be a battery charger, have been made to file affidavits to show that they have been purchasing ammonium chloride from the appellants for a number of years, in connection with their respective businesses. But counter-affidavits have been filed by the first respondent to the effect that these persons are employed in professions which have nothing to do with the use of ammonium chloride, and that their affidavits are consequently false. The first respondent also challenged the appellants to put these persons into the witness box to face cross-examination. But the appellants without accepting the challenge filed an affidavit saying that though these persons are otherwise employed they have been in their spare time doing tinkering work and battery charging and purchasing ammonium chloride from them. It is significant that they dare not deny that their main occupation has nothing to do with the use of ammonium chloride. If evidence of this kind is excluded as it must be, there is little proof of user or acquisition of distinctiveness by user. As for the accounts produced by the appellants they show that there have been selling a variety of goods under a variety of trade marks during the period from 1955 to 1965. The accounts do not disclose that ammonium chloride was ever sold by the appellants under the trade mark of RLK or what part of the total turnover relates to the sales of goods under the impugned letters. In these circumstances, I have little hesitation in agreeing with the Assistant Registrar of Trade Marks and holding that the letters RLK are registrable neither in Part B of the Register as an inherently distinctive mark nor in Part A of the register as being inherently capable of distinguishing or by reason of the use of the trade mark or of any other circumstances it is so adapted to distinguish. It would then follow that the registration of the impugned trade mark was made in the Register without sufficient cause and the entry has wrongly remained in the Register and the Assistant Registrar was right on the application of the person aggrieved to expunge the same from the Register.

16. Lastly it is argued on behalf of the appellants that the first respondent cannot be regarded as an aggrieved person within the meaning of Section 56 of the Act, and that his application for rectification before the Assistant Registrar was not maintainable. The expression 'person aggrieved' has been liberally construed by the Courts. The applicant for rectification has been carrying on trade in the same goods as the registered proprietor of the trade mark. The appellants themselves have instituted a suit in O.S. No. 13 of 1966 on the file of the City Civil Court of Hyderabad at Secunderabad, praying for an injunction restraining the first respondent from ever manufacturing or selling ammonium chloride or navasagar impressed with the trade mark crescent and two stars in a row with the expression ICI, Amelo, and also with the devices of three crescents with the expression 'KCI' impressed. The appellants have complained in paragraph 12 of the plaint in that suit that they have suffered very much on account of the first respondent introducing the goods under an imitation trade mark, and that the continued use of the trade mark by the first respondent would cause the appellants incalculable and irreparable injury, which no amount of money could adequately compensate. On the other hand, the first respondent has in his written statement in the said suit complained that it is the appellants that have tried to injure them out of malice and jealousy by using the impugned trade mark. Viewed against the background of this dispute there can be little doubt that the applicant for rectification is an aggrieved person within the meaning of Section 56 of the Act. I therefore repel all the contentions of the appellants and dismiss this appeal with costs.


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