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imperial Tobacco Co. of India Ltd. Vs. Registrar of Trade Marks and anr. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtKolkata High Court
Decided On
Case NumberA.F.O.O. of the Registrar of Trade Marks No. 129 of 1966
Judge
Reported inAIR1968Cal582,73CWN169
ActsTrade and Merchandise Marks Act, 1958 - Sections 1, 9, 9(1), 9(2), 9(3), 9(5), 28(1), 29, 29(2) and 32
Appellantimperial Tobacco Co. of India Ltd.
RespondentRegistrar of Trade Marks and anr.
Appellant AdvocateN.C. Chakraverty, ;B.C. Bachawat and ;S.N. Sen Gupta, Advs.
Respondent AdvocateS. Tibrewal, ;R. Tulshyn and ;Arati Pal, Advs.
DispositionAppeal dismissed
Cases ReferredThorne & Co. Ltd. v. Sandow Ltd.
Excerpt:
- p.b. mukharji, j. 1. this is an appeal under section 109 of the trade and merchandise marks act of 1958. 2. the appellant is the imperial tobacco co. of india ltd. having its registered office at virginia house, 37. chowringhee, calcutta. the respondents are the registrar and deputy registrar of trade marks. 3. the facts are briefly as follows: on 29-2-60 the appellant made its first application for registration of a trade mark before the registrar applying for registration as a trade mark of a label bearing the device of snow-clad hills in outline and the word 'simla' written prominently in various panels of the label. the specification of the goods in the application reads as 'manufactured tobacco'. this application was for registration of the trade mark in part a of the register in.....
Judgment:

P.B. Mukharji, J.

1. This is an appeal under Section 109 of the Trade and Merchandise Marks Act of 1958.

2. The Appellant is the Imperial Tobacco Co. of India Ltd. having its registered office at Virginia House, 37. Chowringhee, Calcutta. The respondents are the Registrar and Deputy Registrar of Trade Marks.

3. The facts are briefly as follows: On 29-2-60 the Appellant made its first application for registration of a trade mark before the Registrar applying for registration as a trade mark of a label bearing the device of snow-clad hills in outline and the word 'Simla' written prominently in various panels of the label. The specification of the goods in the application reads as 'Manufactured tobacco'. This application was for registration of the trade mark in Part A of the Register in Clause 34 The application stated: 'The said trade mark is proposed to be used 'The point is that on 29-2-60 there was no use of the said trade mark and it was only proposed to be used at that point of time. By his letter dated 9-12-60 the Registrar of Trade Marks informed the Appellant as follows:

'Word Simla' which forms the essential and distinguishing feature of the mark is a tamous geographical name and is not registrable except on very strong evidence of distinctiveness. No such evidence is possible as the mark is proposed to be used. You should therefore show cause why the application should not be refused '.

4. The Appellant replied to this Show Cause Notice on 8-2-61 pleading that since the filing of their application for registration the Appellant had used ''Simla' trade mark continuously and extensively throughout India having sold 69894000 cigarettes under the trade mark 'Simla' throughout their branches of Calcutta, Gauhati, Patna, Kanpur, Delhi, Jullundur. Ahemedabad, Bombay, Jabalpur, Visakhapatnam, Madras and Coimbatore during the period April 1960 to December 1960 and that the Appellant has also incurred advertisement expenses to the extent of Rs. 3,74,749 during that period for popularising Simla cigarettes. It was the plea of the Appellant in that letter of 8-2-61 that Simla trade mark had acquired distinctiveness by continuous and extensive user and that the word 'Simla' connoted and denoted goods manufactured and sold by the Appellant.

5. In answer to this plea, the Registrar of Trade Mark replied on 27-2-61 stating that in order to be registrable, the mark should have acquired distinctiveness on the date of making the application for registration. Therefore, the distinctiveness acquired after the date of the application would not support the application and could not be considered for the purpose of registration. The Registrar by that letter also informed the Appellant whether the Appellant desired to withdraw the application or desired to have a hearing at Calcutta

6. Then followed a complete silence for more than two years. The Appellant remained quiet until 17-7-63 when it represented that a since the evidence of acquired distinctivenes could not be considered because it was acquired after the date of the application for registration, the Appellant had no other alternative but to withdraw the previous application. But the Appellant stated that they were arranging to file a fresh application for registration of the Simla trade mark on the basis of the extensive user of the mark and acquired distinctiveness. The present application for registration of trade mark was the second one. It was filed on 17-7-63 before the Registrar. It was also on that date that the first application for registration was withdrawn. In other words, on 17-7-63 the Appellant was withdrawing their first application for registration and filing their second application for registration.

7. In this second application for registration filed on 17-7-63, the Appellant wanted registration in Part A of the Register of the accompanying trade mark in Class 34 in respect of Manufactured Tobacco in the name of the Appellant. The ground stated in this application was: 'The applicants have used and are continuing to use the accompanying trade mark extensively throughout India having sold 42,2100000 cigarettes under the accompanying trade mark through its branches at Calcutta, Gouhati, Patna, Kanpur Delhi, Jullnnder. Ahmedabad, Bombay Jabalpui Visakhapatnam. Madras and Coimbatore during the period of April 1960 to June 30, 1963 and the applicants had also incurred advertisement expenses of over Rs 15,50,000 during that period for popularising the accompanying trade mark.'

8. In support of this application for registration the appellant filed 22 affidavits from different persons, who could be classified as (1) the employees of the appellant. (2) the dealers of the appellants' tobacco, and (3) the consumers of Simla cigarettes.

9. The crucial point in this appeal is not whether a geographical name could be used as trade mark or not, but whether this geographical name 'Simla' has acquired distinctive ness within such a short period between 29th February 1960 or rather April 1960 and 17th July 1963 which is barely a period of 3 years.

10. By his order dated the 26th March 1966 the Registrar of Trade Marks refused the appellant's application for registration The present appeal to this Court is from that decision.

11. The trade mark 'Simla' with the label is composite in character. Its essential feature is the word Simla. ''Simla' is neither an invented word nor is it a word having a dictionary meaning. It is a well known hill-station of India. Its geographical signification is, therefore, plain and unequivocal. The snow-clad hills in outline on the label makes the geographical significance inescapable. The appellant's whole case now rests on 3 years prior use of this trade mark before the date of the application for registration with the assertion that the geographical name has acquired distinctiveness and so qualified for registration.

12. The Registrar finds that the appellants have no branch at Simla and that tobacco is not grown nor is there any factory for manufacturing tobacco goods in the district or town of Simla according to official publication under the title 'Indian Tobacco Statistics 1939 to 1959 and 'Review of The Central Excise Administration In India 1961-1962'.

13. In the first place, the Registrar ha: come to the finding that the word 'Simla' which in its only and obvious signification is a well-known geographical name of a chief town of India, is inherently not adapt' d to distinguish the goods of any particular trader. He therefore, rightly proceeded to discuss whether the geographical name Simla had acquired a distinctiveness. In discussing the evidence of distinctiveness as sworn in the affidavits used in the application in support of the registration, he said that he had no reason not to accept the appellant's evidence regarding large sale and increasing popularity He however, expressly pointed out that the nature of the evidence was not independent and disinterested. The Registrar came to the conclusion on this point which can be stated in his own words 'It will, therefore, be unwise to accept the trade evidence on behalf of the applicants as conclusive on the question of acquired distinctiveness of the word Simla.' The Registrar came to the finding that the mark was not distinctive on the material date and expressed his conclusion in the following words, 'I am therefore, unable to hold that the applicants' mark had become distinctive on the material date.

14. On the question of deceptiveness of the mark, the Registrar considered the following facts. The appellants' goods did not emanate from Simla and the word Simla was not connected with the origin of the goods. He also considered the fact that tobacco was neither grown nor manufactured in Simla. He repelled the argument on behalf of the appellant that the fact that tobacco was neither grown nor manufactured in Simla could not deceive any one because it was a well known fact, by the remark that it was a fact which would be known only to those people who were living in the neighbourhood of Simla and who were equipped with all the information of the industrial and agricultural resources of the different parts of India. The Registrar took the view that informed smokers may not be deceived, but to an ordinary smoker, who had no special knowledge, Simla might not appear to be a totally unlikely place to be associated with the origin of the cigarettes, and he would, therefore, be deceived by the appellant's mark.

15. The appellant as a last resort made the argument before the Registrar for the registration of the mark Simla at least in Part B of the register, on the ground that the mark had been in extensive use for 3 years prior to the material date and did in fact distinguish the goods of the appellant. Having regard to the finding already arrived at by the Registrar the Registrar refused the registration of the mark also in part B of the register because of its inherent incapacity to distinguish the goods of a particular trader. The Registrar also expressed the view 'Registration in any form, whether in Part A or Part B, will confer a kind of monopoly right on the registrants and will naturally interfere with the bona fide rights of traders of the locality dealing in the same goods. Such monopoly rights must not be granted, as otherwise wealthy applicants will divide amongst themselves all the names of important cities and towns in India to the embarrassment and prejudice of smaller traders.'

16. The first major question of law relates to the registrability of the trade mark which is only a geographical name, such as 'Simla'. The statutory position in India in the Trade and Merchandise Marks Act 1958, may be examined at the outset The definition of Trade Mark is contained in Section 2(v)(i) and (ii) of the Trade and Merchandise Marks Act 1958. That definition points out that for the purposes of Chapter X of the Statute relating to the offences and penalties and procedure except for penalty for falsely representing the trade mark as registered, as stated in Section 81 of the Act, means a trade mark used in relation to the goods for the purpose of indicating or so as to indicate a connection in the course of a trade between the goods and some person having the right as proprietor to use the mark, and in relation to other provision of this Act a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person and includes a certificate trademark registered under the Act.

17. The main accent of this definition in the Trade and Merchandise Marks Act does not raise question of geography or geographical names and is confined to the indication of connection in the course of trade between the goods and the person using the trade mark. In other words the main emphasis in this definition is the connection between the person and whose goods they are.

18. The question of geographical name, however, appears in Section 9(1)(d) of the statute. It says that 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 and one of the particulars mentioned in Sub-clause (d) of Section 9(1) is '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.' The material words in Section 9(1)(d) of the Act for the purpose of this appeal, are 'one or more words having no direct reference to the character and quality of the goods and not being according to its ordinary signification a geographical name' The words of import are 'a geographical name' and 'according to its ordinary signification'. There is and can be no doubt that in this case 'Simla' is a word of geographical name according to its ordinary signification within the meaning of Section 9(1)(d) of the Act.

19. But such a geographical name or a geographical word Is not an absolute disqualification for the purpose of its registration in Part A of the register because by reason of Section 9(2) of the Trade and Merchandise Marks Act, 1958 it is expressly provided, inter alia, that a geographical name 'shall not be registrable in Part A of the register except upon evidence of its distinctiveness.' Therefore a geographical name or a geographical word is registrable on the evidence of distinctiveness. The whole point in this appeal therefore would be whether there is evidence of distinctiveness. There is a definition in Sub-section (3) of Section 9 of the Act which says that for the purposes of the statute the expression 'distinctive in relation to the goods in respect of which a trade mark is proposed to be registered,' means adapted 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 its registration. Subsection (4) of Section 9 of the Act deals with Part B of the register and provides inter alia, that a trade mark shall not be registered in Part B unless the trade mark is distinctive, or is not distinctive but is capable of distinguishing goods. Part B therefore of the register may include a mark which is not distinctive but capable of distinguishing. That is one point of difference between Part A and Part B of the Trade Marks register under the Indian statute. By its Sub-section (6) of Section 9 of the Act the statute gives certain guides for determining whether a trade mark is distinctive or is capable of distinguishing and it provides inter alia that in making such a determination 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 a trade mark or of any other circumstances, the trade mark is in fact so adopted to distinguish or is in fact capable of distinguishing.

20. This brief analysis of the relevant Sections of the Trade and Merchandise Marks Act, 1958 itself shows that a geographical name can be registered in Part 'A' on the evidence of distinctive-ness. The position in law therefore may be stated to be that there is a prima facie bar to the registration in Part 'A' of a geographical name simpliciter but this bar can be overcome on the evidence of distinctiveness by the express provision of Section 9(2) of the statute.

21. Numerous decisions have been cited at the Bar as usual in these Trade Mark appeals. Some of them show geographical names have been refused registration and others show that they have been registered. On the statutory position the law is clear as I have stated whether a geographical name will or will not be registered In Part 'A' will depend on the fact found in each case whether it has acquired or not acquired distinctiveness. Out of deference to the citations made from the Bar I will have to make some reference to at least some of the cases and authorities.

22. Mr. Chakraborty appearing for the appellant has in the first place drawn my attention to the position of the English statutory law on the point. It is not in my view very relevant where our statute if clear enough but nevertheless it gives a perspective of how the statute has reacted towards a geographical name and its registration under the Trade Marks Act In the earlier English Acts like Trade Marks Registration Act 1875, The Patents. Designs and Trade Marks Act 1883 and the Merchandise Marks Act 1887 there was no special provision at all relating to geographical names in England. For the first time the taboo on geographical names appeared in the Patents, Designs and Trade Marks Act, 1888 of England where under Section 64(1)(e) these familiar words appeared 'A word or words having no reference to the character or quality of the goods and not being a geographical name'. Having imposed the total taboo, relaxation by subsequent statutes started coming in. The Trade Marks Act, 1905 in England introduced by Section 9(4) the significant words 'and not being according to its ordinary signification a geographical name' Therefore it has got to be not only a geographical name but must be so according to its ordinary signification so that if the ordinary signification does not identify it with the geographical name then the name crosses the bar of registration. With this relaxation the English statutory law continued almost in the same position until the Trade Marks Act, 1938 when by Section 9(1)(a) the exception was engrafted that even a geographical name will be registrable if it was on the evidence of its distinctiveness. That is the present position under the Indian statutory law under the Trade and Merchandise Marks Act of 1958.

23. Mr. Chakraborty thereafter drew my attention to the fact that geographical names have been registered in Class 34, in India. He collected his materials from the Trade Marks Journal with considerable industry to show that such geographical names as St. Moritz, North Pole Everest, Medina, Panama. Oxford, Kali-ghat, Ellora, Mavfair, West End, Gulmarg, London etc. have been registered. To support his endeavour he produced the list which will be kept with the records of this appeal and which is not objected to on behalf of the Registrar. Strictly speaking no doubt it is not disputed that a geographical name can be registered when it has acquired distinctiveness Therefore, if in a particular case on its facts a geographical name acquired a distinctiveness then there was no bar to its registration, Each case will have to be judged on its own merits to find out whether the geographical name in that particular case has acquired distinctive-ness. The language of Section 9(2) may be recalled that a geographical name shall not be registrable 'except upon evidence of its distinctiveness.'

24. There should therefore be evidence of distinctiveness. In each case therefore where the claim is to register a geographical name, the evidence of distinctive ness has to be carefully scrutinised, analysed and weighed. That is one of the primary requirements of the law on this point It is necessary to emphasise this because it is often thought that any and every kind of evidence will do. In my view the evidence will have to be dependable, careful and effective. The importance of this evidence is the only safeguard in the registration of trade marks against indiscriminate use of geographical names. Both the courts and the Registrar should not be careless on this vital requirement of the statute for evidence about distinctiveness. I propose to analyse later in this judgment both the nature of evidence in this appeal as well as the law on the subject of this evidence for purpose of establishing distinctiveness in trade within the meaning of trade mark law.

25. I shall at this, stage, out of respect to Mr. Chakraborty's citations, discuss some of the other cases on which he relied. I shall also for the same reason discuss some of the eases cited by Mr. Tibriwal appearing on behalf of the Registrar. The well-known cases are the Liverpool case, (1928) 46 RPC 99 and the Yorkshire case, (1954) 71 RPC 150.

26. In the matter of application by the Liverpool Electric Cable Co. Ltd. reported in (1928) 46 R.P.C. 99, the applicants applied to register the words 'Liverpool Cables' in Parts A and B of the register in respect of the electric cables. The Registrar there refused the applications on the ground that although the evidence showed that those words indicated to the trade the company's electric cables, the word 'Liverpool' was not prima facie capable of distinguishing those cables or of becoming distinctive of them and that 'Liverpool' was one of a class of geographical names which were of such importance that the names ought not to be registered for any trader and that the word 'Liverpool' describes the common characteristic of vast quantities of goods, namely, that they come from Liverpool and that the phrase 'Liverpool cables' therefore meant, not the cables of the applicant company, but cables manufactured or dealt in at Liverpool. On appeal from the Registrar's decision to Romer J. the appellant succeeded on the ground that the evidence showed that the words 'Liverpool Cables' did in fact distinguish the company's goods and therefore they were adapted to distinguish or capable of distinguishing them. Romer. J., expressed the view that for such proof of distinctiveness the Registrar should have accepted the application in Part B and in the exerrise of his discretion should have accepted the application in Part A. On further appeal before the Bench of Han-worth. Master of the Rolls and Lawrence L. J. and Russel L. J the appeal was allowed and the decision of Romer J . reversed.

27. The Court of Appeal lays down certain important principles in that case. In the first place, it lays down the principle that the Registrar is not bound to accept an application in Part B to register upon proof of user or that the mark is in fact distinctive and that it is a part of his duty to consider as a judicial officer application put before him and that he may refuse the registration it not satisfied that the proposed mark is capable of distinguishing. Secondly it lays down the principle that in considering whether a geographical name is registrable, both the locality and the goods must be taken into consideration and that the name of such an important commercial centre as Liverpool, even though it may in fact be distinctive of the goods m respect of which it is sought to register it, is not registrable. Thirdly. Lord Hanworth M. R. points out in this decision at page 116 of the report that the duty of the Registrar is not merely to pay attention to the evidence which is essential for fulfilling one condition, but it is important that he should look at the question from the point of view of the public and otherwise as indicated by Hamilton L. J. later to become Lord Sumner, in the application of R. J. Lea Ltd.. (1913) 30 RPC 216 at p. 227 where he said 'It must be adapted to distinguish, which brings within the purview of his discretion the wider field of the interests and strangers and of the public' and Lord Parker in W and G du Cros Ltd.. (1913) 30 R P.C. 660 (673) observing, 'If the Tribunal finds that a mark is anywhere or among any class of people, in fact, distinctive of the goods of the applicant, it may be influenced by this fact in determining whether it is adapted to distinguish these goods from those of other persons, but distinctiveness in fact is not conclusive, and the extent to which the Tribunal will be influenced by it must in my opinion, depend on all the circumstances including the area within which and the period during which such distinctiveness of fact can be predicated of the mark in question.' In fact Lord Parker had observed in that case at the same page at 638 and laid down the principle that but the tribunal is not bound to allow registration even if the mark be in fact distinctive. The common law mark is still not necessarily registered.'

28. The Liverpool case, therefore, does not help the appellant in the present appeal before me On the contrary it goes against the contention of the appellant No doubt if Romer J's views were upheld then the appellant would have succeeded but then the court of appeal in England reversed the judgment of Romer J. If that principle is applied then the decision of the Registrar in the instant case before me was right.

29. The other case is the Yorkshire case, Yorkshire Copper Works Ltd's application for trade mark reported in (1954) 71 RPC 150 There the House of Lords was considering the geographical name Yorkshire for registration in Parts A and B of the register. It may be noticed here that there it was considered that if registration in Part A was refused, registration in Part B must also be refused. The applicant's mark for registration of the word 'Yorkshire' was refused by the Registrar. Appeal to Lloyd-Jackob J. was also dismissed and further appeal to the Court of Appeal was also dismissed.

30. The House of Lords in dismissing the appeal finally reiterated the principle that the Registrar must by virtue of Section 9(3) of the Trade Marks Act 1938 in England consider both, whether the mark is inherently adapted to distinguish and whether it is in fact adapted to distinguish, and secondly that the mark 'Yorkshire' in that case although in fact adapted to distinguish the applicant's goods was inherently not adapted to distinguish the goods of any trader, and thirdly that the mark was not distinctive and the application was rightly refused Lord Chancellor Lord Simond at p. 154 of that Report observed 'But I would say that, paradoxically perhaps, the more apt a word is to describe the goods of a manufacture the less apt it is to distinguish them; for a word that is apt to describe the goods of A, is likely to be apt to describe the similar goods of B. It is. I think, for this very reason that geographical name is prima facie denied registrability. For just a manufacturer is not entitled to a monopoly of 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 other observations of Lord Simond L. C. at p 154 emphasise another principle in this connection where the learned Lord Chancellor emphasised the duty of the Registrar in this connection by saving that in exercising his discretion the Registrar must protect the interest of the public not only of today but of tomorrow and the day after tomorrow This is the principle for deciding the border line cases and Lord Simond L. C. distinguished Monte Rosa case and Teneriffe case. Lord Oaksey delivering the judgment in the Yorkshire case. (1954) 71 RPC 150 and agreeing with the Lord Chancellor at p. 156 of that report expressed the view that 'Indeed where the trade mark is geographical it follows, paradoxical as it may sound; that it can only satisfy factor A (inherent distinctiveness), where it is significant, in the particular context is non-geographical. For only so can it serve to distinguish the goods of one producer from the goods of others. Good imaginary instance of this paradox are North Pole Bananas' Monte Rosa Cigarette' and so on In these instances the geographical term is clearly not applied in any geographical sense, and pro tanto may. I will not say must, be a sufficient compliance with Section 9(3)(a).'

31. The net result of the Yorkshire case, (1954) 71 RPC 150 is that the appellant cannot really have the word 'Simla' registered in the manner that he proposed to do in the present instance, unless he can succeed in showing that it is a name of pure fancy, that it is a fancy word and though the name is geographical, it is not applied in the geographical sense at all. The fact on which the appellant relies to make his case that the word 'Simla' is a fancy name in this instance is that the tobacco is not grown in Simla, it have already quoted that the decision of the Registrar in this case on this point with which I associate Myself. I shall add however, a few more reasons, I shall assume that Simla has no agricultural potentialities even under modern scientific '(sic)thuds to grow tobacco agriculturally, but that is not the end of the appellant's difficulty There may be traders in future who will manufacture tobacco there. Simla may have in future a manufacturing though not an agriculitural centre for tobacco. For instance ipaddy may not be grown on the high altitude hill tops but there may be rice mills on high altitudes. The fact that there is no manufacturing centre in Simla today is not conclusive. The principle M laid down in the cases just quoted above is that the Registrar has to look after the interest of the traders and public 'not only of today but of tomorrow and the day after' Then again there is really nothing of fancy in the word 'Simla' to suggest that it was not used in any geographical sense whatever This is n tobacco which say? it it manufactured in India Simla is a well known popular hill-station in India, The Label itself as part of the proposed trade mark, shows the snow-clad hill Lops. The geographical context of Simla therefore, is inescapable in the present label for registration.

32. This is not like the Magnolia cast in (1897) 14 RPC 265, on appeal in the same volume (1897) 14 RPC 621 where Rigby L. J at p. 627 voiced the principle in discussing the geographical name Magnolia by saying 'But in our judgment the phrase geographical name in Section 64(e) ought not in general to receive so wide an interpretation It must, we think, in the absence of special circumstances, be interpreted so as to be in accordance, in some degree, with the general popular meaning of the words; a word does not become a geographical name simply because some place upon the earth's surface has been called by it. For example, we agree with Kekewich J that the word 'monkey' is not proved to be a geographical name by saving merely that a small and by no means generally-known island has been applied by that name'

33. That principle cannot be applied m this case for the simple reason that Simla is far too well-known a place in the geography of India among the Indians to be compared to 'Monkey' as a small island unknown to many. Secondly, the reason m the Magnolia case was not that Magnolia was so much a geographical name but that it was associated with the device of the flower on the face of the mark as Magnolia is the name of a well known flower The statute, in my view is quite clear on this point of a geographical name and it has to be a geographical name which is so 'according to its ordinary signification' If one applies that test of 'ordinary signification', then the legal position becomes quite clear 'Monkey' in its ordinary signification it no, a geographical name at all but the name of an animal. See Section 9(1)(d) of the. Trade and Merchandise Marks Act 1958

34. Having regard to this view, it will of unnecessary to discuss in detail the of the references on which Mi Chakraverty for the Appellant relied namely (1) Stilton Cheese case, 1967 RPC 173 at pp. 180-81. (2| Scotsman case, 1965 RPC 358 at p. 361 (3) Stone Ale ease (1889) 6 RPC 404 at p. 413 (on Appeal to the House of Lords in (18911 8 RPC 361), (4) Roman Holiday case, 1964 RPC 129, (5) The Champagne case, 1961 RPC 116 at p. 127 (6) Berna case, (1915) 32 RPC 113 and (7) Itala case (1910) 27 RPC 493

35. As Tookev Q. C deciding the Scotsman's case, in (1965) 1965 RPC 358 observed that the word 'Scotsman' in that case had qualified for registration under Section 9(1)(d) being a word having no direct reference to the character or quality of the goods and that it was a figurative or fanciful suggestion of association which the public would accept as such and no more would not be objectionable'. See the observations at p. 361 of that Report. Here, as I have said, I am unable to draw that conclusion that the word 'Simla' is so figurative or fanciful in the present case.

36. Similarly, in the Stilton Cheese case reported in (1967) 1967 RPC 173 it was found and held that the word 'Stilton' had been used for 50 years to denote exclusively cheese manufactured by the particular process and in that particular district and therefore it was held that the word 'Stilton' was inherently adapted to distinguish. Pennycquick J. at p. 181 of the Report makes it quite clear by these words: 'The word is still today used to denote exclusively cheeses made by that process and in that district. It seems to me then that from this factual angle the word 'Stilton' is eminently appropriate to distinguish cheese manufactured lay members of the Association and certified by the Association from cheese not so certified.' Finally the learned judge also observes at p. 181, summarising the points of that case, in these terms 'On the other hand, the evidence before Court at this stage is conclusive that in the trade and amongst the gastrenomic experts the name indicates not only those physical properties', (shape, colour, taste etc.) 'but also a certain method of manufacture and in particular the region from which the cheese comes. Upon this evidence I think one must treat the name 'Stilton' as being distinctive in the sense in which the word 'distinguish' is used in Section 37' of the Trade Marks Act 1938 in England 'Simla' cannot in my judgment on the facts found, claim these characteristics in the present appeal.

37. An interesting case is the one of 'London Candles' reported in (1909) 26 RPC 797 under the title Prices Patent Candles Co. Ltd. v. Ogston and Tennant Ltd This raised the question of a geographical name acquiring a secondary meaning and not in the geographical place but somewhere outside. Price & Co. had a registered trade name consisting of an oblong label with a panoramic view of London looking across Black-friars Bridge with St. Paul's Cathedral prominent in the centre. On the right-hand side of the label was a double circle containing a ship in full sail Price & Co., used this label with the addition of the words 'London Candles' in large letters printed across it for many years is the Morocco market, they designated their staple candle for that market by the words 'London Candles' and these candles were at least to a large extent known to the customer by the native equivalent of those words. Ogston ana Tennant Co. almost copied these words 'London Candles' with their labels. The learned Single Judge in the Court of Session in Scotland Lord Johnston came to the conclusion that O and T's label was an infringement of P. Co's registered trade mark and that at common law O and T's label taking the words 'London Candles' without regard to their meaning as part of the pictorial design was a colourable imitation of P. Co's label and O and T had been guilty of passing-off. Lord Johnston came to the conclusion that the words 'London Candles' had acquired a secondary meaning in the Morocco market in connection with P. Co's candles. Lord Johnston at page 813 of the report formulates the theory of secondary meaning in these terms:

'London is a geographical term and perhaps the most general that could be adopted. There have from time immemorial been other candle makers in London besides the Pursuers. As the word 'London' could not be adopted as a trade mark so its use cannot be absolutely monopolised by any particular manufacturer But a geographical name may acquire a secondary meaning, identifying the goods on which it appears with a particular trader '.

On the facts in this case it cannot be claimed that the word 'Simla' has acquired a secondary meaning and that in course of only three years' time so as to mean by association 'Simla' to be always the tobacco of the appellant company without reference to the geographical place Simla'

38. A secondary or fancy meaning for a geographical name in its ordinary geographical signification can only come in on the ground of distinctiveness according to the statute in this country. In Van Duzer's Trade Mark Application reported in (1887) 4 RPC 31 Lopes L. J., in explaining what is a fancy word observed as follows:

'But now I come to the expression 'fancy word'. It is difficult thing to define: but it is necessary in this case that the Court should define what is meant by 'fancy word' I adhere to the two definitions I gave of that expression during the course of that argument. I think that a word to be a fancy word must be obviously meaningless as applied to the article in question. I think it must be a word fanciful in its application to the article to which it is applied in the sense of being so obviously and notoriously inappropriate as neither to be deceptive nor descriptive, nor calculated to suggest deception or description. Further than that. I think, that the word must have an innate and inherent character of fancifulness which must not depend on evidence, and cannot be supported by evidence, to show that in fact that it is net the deceptive nor descriptive, or calculated to be deceptive or descriptive. What I mean is that a fancy word in nay opinion must speak for itself, it must be a fancy word on its own inherent strength.' Not any of these tests is applicable in the case of the word 'Simla' for which the appellant is asking for registration.

39. The other case to which reference was made in the course of the argument was the Glastonburys' case reported in (1938) 55 RPC 253. When the matter came up before Clauson J., it was held that in spite of the final 's'. 'Glastonburys' was a geographical name prims facie unregistrable and that the evidence was insufficient to prove distinctiveness and that the word was not adapted to distinguish. It was also held by the learned Judge that the presence of such a trade mark would cause confusion. The Registrar was therefore ordered to rectify the register by expunging the mark. On appeal to the Court of Appeal the appeal was allowed and the application to expunge the mark was dismissed. The House of Lords reversed the Court of Appeal and restored the judgment of Clauson J., and came to the conclusion that the mark was not adapted to distinguish the goods of the respondent and that its presence on the register would hamper the rights of other traders.

40. Important observation was made in the House of Lords about the nature of evidence in such cases. Lord Atkin expressly observed at page 260: 'Reliable evidence by salesmen in retail shops or departments that their customers ask for goods by the trade-mark name, and that they supply them to the customers under that name appears to me to be direct evidence and indeed beat evidence that the word is in fact distinctive.' But the majority of the House of Lords did not accept that view of Lord Atkin about the appreciation of the evidence.

41. The majority view was expressed by Lord Maugham L. C. at p. 258 of that report. The learned Lord Chancellor after referring to the decision of the Registrar of Trade Marks v. W. & G. Du Cros Ltd., 1913 AC 624 and the Court of Appeal's judgment in the Liverpool Cable Case. (1928) 46 RPC 99 and Lord Sumner (formerly Lord Justice Hamilton) in the case of R. J. Lea Ltd., (1913) 30 RPC 218 made the following observation:

'In short I am unable to see why the respondents in the circumstances which exist in that case should be allowed to gain such a monopoly in respect of the word 'Glastonbury' as important place of trader in Glastonbury desirous of making a perfectly honest use of the word in a position of grave difficulty and might cause confusion in the minds of the purchaser.'

The learned Lord Chancellor on the question of evidence made the following significant observation at p. 258 of the report:

'Moreover, I am of the opinion that a great deal, if not a bulk, of the evidence relied on by the respondents was evidence of little weight. If a manufacturer in a particular town chooses for some years to use the name of the town as a trade mark in respect of his goods, and then (whilst still manufacturing there) proceeds to ask of his trade customers what the name of the town indicates to them, it is I think inevitable that many of them will reply that the name indicates to them the manufacture of the persons from whom they have been in the habit of procuring the goods. The association of the good's with the place is not in my opinion thereby negatived. Accordingly for my part I attach some weight to the respondent's customers - all of them or nearly all of them, framed in the same words - stating that the name of Glastonbury, when used in connection with the slipper-shoes and over-shoes, indicates the respondent's goods to the exclusion of those of other manufacturers. I should add that it is plain that such a customer of the Respondents can only give evidence as to what the name means and that he is not entitled to give evidence a? to what the name would mean to anyone else in the trade or to the public. Evidence as to the meaning which members of the public, actual or probable buyers of Sheepskin slippers would attach to the words is exceedingly scanty. In the view that I take of the evidence given by customers of the Respondents, the conclusion is almost inevitable that the opinion of the trial Judge on the question whether the evidence was sufficient to prove that the mark was a mark adapted to distinguish the Roods of the Respondents from those of other persons was correct.'

42. The reason for setting out the observation of Lord Maugham, L. C. in A. Bailey & Co. Ltd. v. Clark, Son & Morland Ltd., (Glastonbury's case) in (1938) 55 RPC 253 (259) will be obvious when I come to deal with the present appeal before me.

43. In summarising the legal position on this point of geographical names and distinctiveness, the learned Editor of the 9th Edn. of Kerly's Law of Trade Marks and Trade Names at p. 400 and para 758 analyses the cases as falling under two categories. In the first place, there is a class of cases 'where the question is whether a defendant has made a misleading use of a geographical appellation; and those where the allegation is that, although as a geographical appellation the expression complained of may have been accurately used its use is calculated to represent that the goods are of the plaintiffs'. The learned commentator then proceeds that to succeed under the former head it is enough for the plaintiff to prove '(1) that he produces the substance in a given place. (2) that no one else produces the substract in that place; (3) that the defendant is selling the substance with the name of that place, as a description; and (4) that there is likely to be deception of the public; although as the Spanish Champagne case show.-- there are other ways of making out a case.' To succeed under the second head, the learned editor comments that the plaintiff must prove that the appellation in dispute has ceased to have a purely descriptive meaning as in the 'Stone Ales' case where although the right of the appellant to state that his been was brewed at Stone was recognised it was held to be subject to an obligation not to do so in any manner calculated to cause the appellant's beer to be passed off as that of the respondents, which was commonly known as 'Stone Ale' In other words, it is said that if as required by the rule laid down by the authorities the plaintiff proves that an apparently descriptive word which he claims to appropriate has ceased to have a purely descriptive meaning, it is difficult to imagine how the defendant can be truthfully using that word with that meaning.

44. It will be appropriate at this stage to refer to two Indian case . In Hindusthan Development Corporation Ltd. v Deputy Registrar of Trade Marks : AIR1955Cal519 on a reference to a learned third Judge when there was difference between two learned Judges of a Division Bench, it was decided that Section 6(1) of the Trade and Merchandise Marks Act 1958 is couched in a negative form and its effect is that in order to be eligible for registration, a mark must contain at least one of the particulars so specified. In other words, the absence of any of the particulars would disqualify the mark for registration though the presence of any one of them would not make the mark ipso facto eligible for registration. There the mark was ''Rasoi'. It quoted with approval the celebrated Livron case, (1936) 54 RPC 1R1 and approved the observation made by Crossman J. at p. 180 viz. 'In my judgment. 'Livron' is a word whose only signification is geographical and hence does not contain the essential particulars of Section 9(4) '

45. Menai. J. of this Court in the Matter of India Electric Works Ltd., reported in (1945) 49 Cal WN 425 upheld the decision of the Registrar refusing to register 'India' as a trade mark in respect of the electric fans and regulators although used by the applicant from before the relevant date on the ground that it was not adapted to distinguish.

46. The legal position then is clearly established that a geographical name which is geographical in its ordinary signification cannot be registered in Part 'A' except upon evidence of its distinctiveness. It would be therefore necessary to examine whether in the present case there is evidence of such distinctiveness.

47. Before analysing the evidence a word here is necessary to say how Courts have looked at the problem of acquiring distinctiveness. The leading authority on the point is the decision of the House of Lords already mentioned above, 1913 AC 624 Lord Parker in His Lordship's judgment at page 633 of that report observed .

''My Lords the proper time for considering whether a mark is registrable or whether having regard to the interests of the public it ought to be accepted or rejected is in my opinion when the application for its registration first comes before the Registrar under the 12th section of the Act of 1905. If the mark be then allowed to proceed to advertisement under the 13th section, all possibility of considering whether in the interest of public or otherwise, it ought to be admitted to registration may have been lost for unless there he private opposition to the registration the mark must, in default of the intervention of the Board of Trade be put on the register under the 16th section. In this respect the Court of Appeal appears to have acted under an erroneous impression as to the true meaning and effect of the Act They were, in my opinion, bound to determine the question raised before them and could not postpone its determination until after the mark had gone to advertisement

48. This answers Mr. Chakraborty's argument on behalf of the appellant that the Registrar should not have decided it himself before the stage of advertisement but should have first advertised the mark and then after opposition and on evidence decided this point. Mr. Chakraborty has tried to distinguish this case by saving that the decision in that case was based on the British Trade Marks Act of 1905 which was different with regard to advertisement and other provisions. He is right in that submission But that difference would not make the difference here on the ground that the scheme of the Trade and Merchandise Mark1- A 1 1958 in India is VPS the Registrar amole discretion, power and in some case duty to decide this point before ii reach*-*- the stage of advertisement Section ' 814) gives the Registrar the right to refuse the application or to accept it absolutely or subject to such amendments, modifications conditions or limitations as he may deem fit Section 18(6) inter alia makes it clear that in case of such refusal the Registrar has to record in writing the grounds for such refusal which he ha: done in this case. Even after acceptance the Registrar may withdraw his acceptance under Section 19 of the Act on grounds mentioned there. It is followed by Section 20 which provides that when an application for registration has been accepted the Ragistrar shall cause the application at accepted to be advertised in the prescribed manner. There is a proviso which dispenses with such advertisement by saying that the Registrar may cause the application to be advertised before the acceptance if it relates to a trade mark to which Section 9(2) applied which includes the case of a geographical name on evidence of distinctiveness or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do. This proviso in my opinion does not take away the discretion, the right or even the duty of the Registrar to decide this point at the time when he is considering whether he should accept or reject the application for registration under Section 18.

49. Secondly. Lord Parker in that case observed that both the area and the time are important considerations in finding distinctiveness. In that case which Lord Parker was deciding the company commenced its business only in 1908 and applied for registration on the 2nd December 1910. It was held in that case that this was too short a time to acquire distinctiveness. Lord Parker observed a page 637 of that report as follows:

'But the tribunal is not bound to allow registration even if the mark be in fact distinctive. A common Law mark is still not necessarily registrable. If the tribunal finds that a mark is anywhere or among any class of people, in fact, distinctive of the goods of the applicant, it may be influenced by this fact in determining whether it is adapted to distinguish these goods from those of other persons, but distinctiveness in fact is not conclusive and the extent to which the tribunal will be influenced by it must, in my opinion, depend on all the circumstances, including the area within which and the period during which such distinctiveness in fact can be predicated of the mark in question. In the present case it appears that the mark W & G in script is at the present moment, and in a particular area, in fact distinctive of the cars of the applicants for registration, but the area within which and the time during which such distinctiveness has existed, are in my opinion insufficient to displace the opinion on more general grounds.'

The learned Editor of the 9th Edition of Kerly on the Law of Trade Marks and Trade Names in paragraph 286 and pages 144-45 has also emphasised both the elements of area and time to acquire distinctiveness. It has been said there that an applicant is entitled to withdraw an application and to make a second application so as to obtain the advantage of a longer period of use and the case of Thorne & Co. Ltd. v. Sandow Ltd., (1912) 29 RPC 440 at p. 451 is cited as an authority for that purpose. It is also made clear that it is to be observed that the use which the tribunal is authorised to take into consideration is use of the trade mark applied for as a trade mark; therefore, where there has been no actual use as a trade mark although there may have been use in other ways, the Court cannot, it would seem, take into consideration such other use and in support of this proposition the case of Gramophone Co's application, (1910) 27 RPC 689 and Lea's application. (1917) 34 RPC 94 are cited. A significant observation appears in the Gramophone case reported in (1910) 27 RPC 689 at page 700 where Parker J., makes the observation: 'The notion of distinguishing gramophones made by the proprietor of the Trade Mark from gramophones made by others, in other words, the original and legitimate function of a Trade Mark, appears to re entirely lost in the idea of a trade monopoly in the name of an article, a monopoly which it appears to be thought anyone who can afford it may secure by spending enough on advertisement, and of which quite apart from any deceit or misrepresentation it would be dishonest after such expenditure to attempt to deprive him.'

This answers one of the points urged on behalf of the appellants that they have spent over Rs. 15.30.000 in advertisement expenses Spending on advertisement is not enough or sufficient proof to establish distinctiveness There are many articles or goods over which a lot of money is spent in advertisement but the magnitude of advertisement expenses does not by itself prove that they have acquired distinctiveness On the contrary, there may be articles or goods over which comparatively little advertisement expense is incurred but which may nevertheless acquire distinctiveness.

50. I will be appropriate now to have a close look at the affidavit evidence and evidence in letters used in this case to prove acquisition of distinctiveness, The letters which I have already quoted from the appellant company to the Registrar and the Deputy Registrar show (a) sale of 42.21.00.000 cigarettes under the proposed trade mark and (b) the expenditure of Rs 15,50.000 on advertisements. Sale of cigarettes, as expenditure on advertisements does not by itself establish that the goods have acquired distinctiveness There are many goods or articles in trade or business which have large sales but no distinctiveness It has been argued that sales of all cigarettes are increasing in the modern age in India for a variety of reasons such as increase of population, rise in the standard of living, increasing vice and addition to nicotine habit in spite of the threat of cancer and therefore increase in sales of cigarettes by themselves are no conclusive indication of 'distinctiveness' within the trade mark law.

51. Distinctiveness in trade has to be established. It is a notion by itself. It may be result of the sales or of the advertisements, but that result has to be proved. Sales and advertisements may be the means to lead to distinctiveness but they themselves are neither necessarily so nor conclusive. It is unfortunate that except the bare figures stated in these letters and bare statement of sales of Simla Cigarettes appearing at p. 80 of the Paper Book, no books of accounts, no allocation of separate expenditure, no profits from Simla Cigarettes from the books of the appellant and not even the nature and frequency of advertisement have been produced to support the total figures put down in these letters or statements.

52. Coming now to the affidavit evidence in this case, the affidavits come from three classes of people (1) the employees themselves, (2) the dealers and (3) the consumers. It is admitted in these affidavits that the mark was first used in April 1960. It, therefore, follows that on the 2nd application for registration made on 17th April 1963, the appellant claims to have acquired distinctiveness within about a period of 3 years time which the House of Lords did not find to be sufficient time to acquire distinctive-ness in Du Cros's case in 1913 AC 624. Applying the test of judging the evidence as laid down by Lord Maugham L. C. in the House of Lords in Du Cros's case 1913 AC 624 it Is plain that the evidence is wholly insufficient as found by the Registrar. The evidence comes from such persons as (1) A compounder, Desai, (2) Gangaram, who is really a shop keeper and who calls himself as a Merchant, (3) Sachnindra Nath Dey, a smoker for 3 years, (4) Sanat Kumar Bhattacharya, another shop keeper, (5) Md. Jaffer. a shop keeper in the New Market, (6) Agarwalla, a wholesale cigarette dealer, (7) Prohlad Singh, a smoker. (8) Gangabishan Sud. a shop keeper, (9) Sudarsan Bhatia, a smoker, (10) Binoy Kumar Shome, who is a new smoker of 2 years standing, (11) Gopal Nandi, a shop keeper of Panbazar Gauhati, (12) Haslam, smoker who does not say that he him-self smokes Simla cigarettes, (13) Atmaram, another shop keeper, (14) Choureshla, a shop keeper, who describes himself as a Cigarette and Pan Merchant, (15) Md. Ahsan, a smoker, (16) Rammurti, another smoker. (17) Famir Md. a seller of cigarettes.

53. These affidavits try to say - (a) that Simla cigarettes are popular, (b) that their sales are increasing, and (c) that they are known in the market as Simla cigarettes of the appellant No doubt these affidavits come from different parts of India.

54. So far as the employees and the dealers are concerned their evidence is not disinterested or independent evidence. They are interested to boost the appellant who patronises them. The evidence of the smokers is certainly disinterested and independent. But they are few and far between and of a type not dependable as will be seen from the list above. The pattern of affidavits is almost common to all. The pattern is the same & the contents are almost verbatim the same. In some cases like the Affidavits of Atmaram and Sud whose originals were produced by the Registrar in Court although are in English the deponents do not seem to know English having signed in Hindi or Urdu and other Indian languages and there is no statement in the affidavits that the statements made therein were read over and explained to them and they signed such affidavits after having understood what they were signing. The status, responsibility, dependability of these persons specially when they used the evidence of affidavits which cannot be checked do not seem to indicate that it is reliable evidence which can prove distinctiveness in a magically short time of barely three years. Distinctiveness of goods in a trade by its association with a particular name required normally a hard, laborious and time-consuming process in business. There can certainly be no hard and fast rule for any particular minimum period of time required to acquire distinctiveness. In some cases the time to acquire distinctiveness may be larger than in others. But In this there Is a limit. No doubt what that limit is will depend on the facts of each case. But then the important point is that it must be a reasonable time which can make it reasonably possible for one to acquire distinctiveness in the ordinary world of business. When the application in this case was first made on the 29th February 1960, it was a mark which was not in use at all, but which mark was only 'proposed' to be used. When the Registrar pointed out to the appellant that Simla being a geographical name this 'proposed' mark could not be registered because there was and could be no distinctiveness acquired. Keeping this application for registration pending the appellant is alleged to have gone on building up a trade In 'Simla' cigarettes by investing money in advertisements and pushing on with his sales of Simla cigarettes without registration. While all these were being done, the original application was kept pending until the 17th July 1863, when the appellant simultaneously withdrew their original application and put in this new application for registration stating that while the original application was pending, they have acquired distinctiveness with the word Simla in the meantime. That is a context which does not impress and help in the acquisition of distinctiveness in the facts of this case.

55. The need for careful scrutiny o) the affidavit evidence produced in Trade Mark Appeals cannot be overemphasised. Hamilton L. J. in Bardman's case, (1913) 30 RPC 218 went so far as to say that in cases of application which are not opposed, the Registrar is entitled to scrutinise the evidence not only with 'critical' but even with 'sceptical vigilance'. I perhaps, shall not go to the length of suggesting that vigilance should be sceptical but I agree respectfully with Hamilton L. J that scrutiny of the evidence should he critical.

56. For these reasons, I uphold the decision of the Registrar and his finding that the appellant's mark had not become distinctive, Evidence is not such which proves such distinctiveness The question now is if there is good reason for registration of the appellant's mark in register B of the Trade Marks Register.

57. The Registrar in his decision has refused registration of the Appellant's mark in Part B of the Register because of its inherent incapacity to distinguish the goods of a particular trader. He has also observed that 'registration in any form, whether in Part A or Part B, will confer a kind of monopoly right on the registrants and will naturally interfere with the bona fide rights of traders of the locality dealing in the same goods. Such monopoly rights must not be granted, as otherwise wealthy applicants will divide amongst themselves all the names of important cities and towns in India to the embarrassment and prejudice of smaller traders.'

58. The Registrar has a discretion in this matter He has exercised his discretion and has refused the Appellant's claim to have the mark registered in Part B of the Trade Mark Register. I do not think that he exercised his discretion improperly or capriciously or illegally.

59. The relevant sections relating to the registration in Parts A and B of the Register have already been noticed earlier in the judgment under Section 9(4) of the Trade & Merchandise Marks Act 1958. Registration in Part B is not permissible unless either the trade mark is distinctive or even if it is not distinctive but is capable of distinguishing goods. There are many legal debates in different judicial decisions about the fine distinction between a mark which is 'distinctive' and a mark which is 'capable of distinguishing' although is not distinctive.

60. There are certain guides laid down by Section 9(5) of the Trade Marks Act to show when a trade mark is distinctive or it capable of distinguishing. 1 do not consider Section 9(5) of the Act is exhaustive. It is illustrative to indicate the features which the Tribunal 'may' regard in determining whether a trade mark is distinctive or is capable of distinguishing. The first consideration under Section 9(5)(a) is when a trade mark is inherently distinctive or is inherently capable of distinguishing The second feature which the Tribunal may regard under Section 9(5)(a) of the Act is where by a 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. Even applying these Illustrative tests in Section 9(5) (a) or (b) I am of the opinion, in agreement with the Registrar's decision, that 'Simla' trademark on the facts of this case is not inherently distinctive of the appellant's goods Nor do I think it is inherently capable of distinguishing the appellant's goods on the same facts discussed above. I am satisfied that on the facts found, the use of the trademark 'Simla' or any other circumstance in fact makes the appellant's trademark adapted to distinguish or capable of distinguishing the appellant's goods within the meaning of Section 9(5)(b) of the Act.

61. I am of the view that the whole doctrine of a trade mark which is not distinctive but which is only capable of distinguishing, within the meaning of Section 9(4) of the Trade and Merchandise Marks Act 1958 for the purpose of registration is Part B, must be applied with great caution in respect of marks which fail to be registered in Part A of the Register under Clauses (a), (b), (c) and (d) of Section 9(1) of the Act which includes the case of a geographical name according to its ordinary signification like Simla. Important reason is that such a geographical name under Section 9(1)(2) is expressly made by the status not to be registered in Part 'A' 'except upon evidence of its distinctiveness'. It is only when such a geographical name is distinctive and its distinctiveness has been proved on evidence then the geographical name can be registered in Part 'A'. It does not say that it can be registered in Part 'A' even upon evidence of the fact that it is capable of distinguishing the goods. Distinctiveness is the verv core ground for registration in Part 'A' of the Register. Those marks which are capable of distinguishing or adapted to distinguish are not necessarily or always those which are not distinctive, so that the common impression that a mark which fails to be registered in Part 'A' automatically qualifies for registration in Part 'B' is not legally correct. The expression 'capable of distinguishing' involves uotb the future potentiality and the pre-sent capability of distinguishing in determining whether a mark is 'capable of distinguishing' it is not mere future speculation by itself into uncertain future events. There has to be a present judging and assessment whether the mark is 'capable of distinguishing' In doing so the nature of the mark the nature of the goods in respect of which it is used or to be used, the nature of the market in which it is to operate including the geography, the country the consumer and also the future prospects Where it has to be judged whether the mark is 'adapted to distinguish' the further consideration should be the nature of the adaptation and what is it in the mark which is adapted to distinguish

62. In a RECENT decision of the English Court of Appeal in 'Weldmesh' trade mark reported in 1966 RPC 220, Lloyd-Jackob J. ,in the first instance reported in (1948) 65 RPC 590 interpreted the words 'adapted to distinguish' in part A and 'capable of distinguishing' in relation to Part B of the English register as being deliberately chosen so as to direct the particular inquiry aright, the former emphasising that it is because of the presence of a sufficient distinguishing characteristic in the mark itself that distinctive-ness is to be expected to result whatever the type and scale of the used and thus secure an estimation of the positive Quality in the mark and the second that, in spite of the absence of sufficient distinguishing characteristic in the mark itself, distinctiveness can be acquired by appropriate user thereby overcoming a negative quality in the mark The Court of appeal in dismissing the appeal observed that the legislature must have intended to draw a distinction between that which is inherently capable of distinguishing with that which is inherently adapted to distinguish and approved of the definition propounded by Lloyd-Jackob J. See observations of Wilmer L J in 1966 RPC 220 at Rs 227-228 of Harman L. J. at page 228, Russell L. J. at p. 229. It must however, be remembered that the Weldmesh trade mark was not concerned with a geographical name.

63. It must be observed that the registration either in Part A or Part B of a trade mark if valid gives to the registered proprietor of the trade mark the exclusive right to the use of such trade mark and to obtain relief in respect of the infringement of the trade mark in the manner provided by the Statute. That is the provision of Section 28(1) of the Trade and Merchandise Marks Act 1958 The only difference is that under Section 29(2) of the Act, in an action for infringement of a trade mark registered in Part B. an injunction or other relief shall not be granted. If the defendant establishes to the satisfaction of the Court that the use of the mark is not likely to deceive or cause confusion in the manner laid down in Sub-section (2) of Section 29 of me Act. That defence apparently on the language of Section 29, is not open to the defendant when registration is in Part A of the Act. The other special provision which distinguishes registration in Part A of the register from Part B of the register it. Section 32 of the Trade and Merchandise Marks Ad 1958, which makes registration in Part A conclusive regarding its validity after the expiration of 7 years, except on 3 grounds, specially mentioned there of (a) fraud, (b) contravention of Section II or offending against the provisions of this section on the date of the commencement of the proceedings or (c) that the trade mark was not at the commencement of the proceeding distinctive of the goods of the registered proprietor.

64. For the reasons stated above and on the authorities discussed. I uphold the decision of the Registrar on the grounds stated before me and on further grounds advanced in this judgment.

65. The appeal, therefore, fails, and isdismissed with costs. Certified for twoCounsel.


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