Raghbir Singh, Vice-Chairman
1. The present appeal has been filed in the Board under Section 91 of the Trade Marks Act, 1999 against the order dated 31st March, 2004 of the Assistant Registrar of Trade Marks, Kolkata.
2. First Respondent herein filed an application on 25.8.1994 being application No. 638073-B in class 3 for registration of the trade mark consisting of the word 'RAMAYAN' with the device of crown in respect of agarbatties, dhoops, incense sticks and perfumeries etc. He claimed user since 1.1.1987. He further filed a request in form TM-16 dated 6.8.1996 to rectify the user as from 1.1.1981 which was allowed by the Assistant Registrar of Trade Marks.
3. Appellant herein filed notice of opposition on 5.9.2001 raising objections under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958. In the usual course, the first respondent filed his counter statement and the appellant filed evidence in support of his opposition. The first respondent also filed an affidavit as evidence in support of the application. The Assistant Registrar of Trade Marks heard the matter on 18.12.2003 and he identified that the opposition was mainly based under Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958.
4. Learned counsel for the appellant argued before the Assistant Registrar that the impugned mark being name of a religious book cannot become the subject matter of monopoly for an individual. He cited as many as seven cases which the Assistant Registrar chose hot to discuss except for referring to the citations of those cases in his order. The Assistant Registrar put reliance upon the copies of certain sale invoices filed by first respondent, the panchnama dated 28.10.1998 entered between the appellant and the first respondent and copy of the registration certificate as SSI unit dated 26.10.1995 granted by the Bihar Government to the appellant. He also referred to the applications for registration of the mark by the appellant being application Nos. 723779 and 724212 in class 3 claiming user since 5.11.1986 and found that the copies of the bills and invoices which have been filed by the appellant pertain to the year 2002. The Assistant Registrar found that the mark consisting of the device of crown and the word 'RAMAYAN' is capable of distinguishing the goods of first respondent and the word 'RAMAYAN' is not included in the list of marks not registrable as per the directions of Central Government issued under Section 23(1) of the Trade and Merchandise Marks Act, 1958. He found that the first respondent had proved adoption and user of the trade mark 'RAMAYAN'. He rejected all the grounds taken in notice of opposition and chose not to exercise his discretion under Section 18(4) of the Act and ordered for registration of the mark.
5. Appellant filed the appeal in the Board on 26.5.2004. Broadly the grounds taken in the appeal are as follows: -
a) First respondent claimed his user in his application No. 638073 dated 25.8.1994 as from 1.1.1987. The appellant filed application No. 723779 dated 17.6.1996 claiming user from 5.11.1986. The said application is pending for registration. In an application for rectification filed by the appellant before the Copyright Board, the first respondent in his reply dated 27.7.1998 had admitted the use of the appellant for the trade mark 'Badshah Ramayan' since 1986. Thus the appellant is prior in use of the mark 'Badshah Ramayan' which fact has been admitted by the first respondent.
b) First respondent's mark 'RAMAYAN' is not a distinctive mark and is devoid of any distinctive character. The mark is not capable of distinguishing the goods of one person from those of another person.
c) 'RAMAYAN' word per se is not registrable since it is the name of famous and well known religious epic hook of Hindus. It carries a large sentimental value for the people and thus no trader can claim exclusive right to the use of such a word. More than 20 traders in Patna and many more in different parts of India are using the trade mark 'RAMAYAN' and thus it has become public juris. The appellant produced photocopies of certain packets with the word 'RAMAYAN' being used by many traders. The use of the mark by first respondent is tainted with dishonesty as in one of their notice to the appellant dated 19.6.1996 they had alleged that they are engaged in the manufacture of Dhoop, Agarbati for nearly one decade from 1987 and they had wrongly and willfully alleged in the said notice that they are the registered proprietors of trade mark 'RAMAYAN'. Large reputation and goodwill had accrued to the respondent's mark 'RAMAYAN' by reason of advertisement, sales etc. The impugned mark for which the first respondent is seeking registration is identical with the appellant's mark 'Badshah Ramayan' which is pending registration. The impugned registration will cause harassment to other traders and purchasing public is bound to be confused and deceived into buying the goods of the first respondent bearing the trade mark 'RAMAYAN'.
6. The important grounds taken for appeal included that first respondent's mark is neither distinctive nor capable of distinguishing the goods of others thus failing to meet the requirements of Section 9 of the Act. The mark is used by more than 20 traders in Patna and it had become so common in the market that it ceased to connect the first respondent with his goods. First respondent is not the proprietor of the trade mark 'RAMAYAN' being name of holy religious book of Hindus, as no one can have the monopoly on the religious holy books like Ramayan, Mahabharata, Guru Granth Sahib, Bible and Quran. The first respondent having used the word 'RAMAYAN' in a number of documents without the mark being registered is enough to conclude that the user was tainted with dishonesty and the said user of the word 'R" in the mark amounts to an offence under Section 107 of the Act. The documents submitted by the first respondent are fabricated on the face of those documents as those are riddled with contradictions. The appellant is prior user of the mark on the basis of submissions made by the first respondent in the copyright matter.
7. First respondent filed counter statement on 26.7.2004 generally denying the averments of the appellant. First respondent emphasized that his is a well known trade mark and he is vigilant in taking action against all those who use the trademark 'RAMAYAN', but the appellant is always interested only in restricting the respondent's use of the said mark 'RAMAYAN' while the appellant knows pretty well that there are several other traders in Patna itself. Appellant in his reply dated 19.8.2004 to the written statement of the first respondent, denied the averments of the first respondent.
8. The Board in its sitting held at Kolkata on 7.12.2004 heard the matter. Shri S.S. Rana appeared for the appellant and Shri A.A. Prabhakara Reddy appeared for the first respondent.
9. The Assistant Registrar heard the matter on 18.12.2003 and passed orders on 31.3.2004. The appeal under Section 91 of the Trade Marks Act, 1999 has been filed in the Board on 26.5.2004. Sub-section 3 of Section 159 of the Trade Marks Act, 1999 provides that the provisions of that Act shall apply to any application for registration of a trade mark pending at the commencement of that Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof. The Trade Marks Act, 1999 was brought into force on 15.9.2003. In view of this, the proceedings conducted by the Assistant Registrar on 18.12.2003 and consequent thereupon the orders issued by him on 31.3.2004 and the instant appeal filed in the Board are the matters covered under the above Sub-section 3 of Section 159 of the Act. Accordingly, we shall construe references to the provisions of the Trade and Merchandise Marks Act, 1958 relied upon by him in his order dated 31.3.2004 as to corresponding references thereof in the Trade Marks Act, 1999.
10. The Assistant Registrar in his cryptic order has come to the conclusion without any discussion that the copies of the sale invoices filed by the first respondent prove user of the impugned trade mark since 1981. It is pertinent to mention here that in his application as originally filed, the user claimed by the first respondent was 1.1.1987. However, immediately after filing of the application for registration by the appellant on 17.6.1996, the first respondent moved an application in TM 16 on 6.8.1996 with a view to change the user as from 1.1.1981. It was expected of the Assistant Registrar to discuss the evidence produced to support the claim of user in detail. Nothing can be read out of the order as it stands now. There is a reference to a panchnama dated 28.10.1988 entered into between the appellant and the first respondent placed at pages 238 to 239 (Annexure-H) of the typed set. The learned Assistant Registrar has concluded that the appellant was the dealer of the Agarbathis manufactured by the first respondent upto October, 1995 since appellant owned some money to first respondent and the appellant had been selling the products manufactured by the first respondent for the last few years and this panchnama is towards the repayment of that money. It shall be over jumping the fence to conclude that since the appellant had been selling the products manufactured by the first respondent, the appellant could not have been the manufacturer in his own right. He has further put reliance upon the registration certificate No. 3101662 dated 26.10.1995 granted by the Government of Bihar to the appellant and inferred out of that, the appellant only started manufacturing the Agarbathis from 5.10.1995, since the said certificate makes a mention of that dale in that certificate. Of course, this can be taken to be one of the probable evidences to determine the date of manufacture. However, in real life, many small scale units start operating without taking a licence, more so in a case where the licence is in relation to a very small unit as mentioned" in the heading
The learned Assistant Registrar has quoted the citations of seven judgments of the High Courts and of the Supreme Court, but has not referred to any important features or the principles laid down in those cases to support his order. The appellant opposed the application Under Section 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958. Since the application has been decided under the provisions of the Trade Marks Act, 1999, we will take help from the corresponding provisions of the new Act in deciding this appeal. Section 9 of the Trade Marks Act, 1999 provides:-
"Absolute grounds for refusal of registration.--(1) The trade marks--
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practices of the trade, shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trademark.
(2) A mark shall not he registered as a trade mark if-
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurl the religious susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of-
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
Explanation.-For the purpose of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a aground for refusal of registration.".
The first respondent has chosen 'RAMAYAN' in English and Devnagri as the important feature of its word mark per sc with the device of crown. It needs no re-emphasizing that Ramayan is a famous holy book of Hindus having its sentimental attachment for them. It is not an invented word. The word is descriptive having a particular meaning and association with the religious feelings of a vast section of the Indian Society. The appellant in his typed set filed along with the appeal has submitted the photo copies as Annexure-A6 of the cartons of the various producers located in the City of Patna, other cities of Bihar and some belonging to other States in India wherein the word 'RAMAYAN' both in Devnagri and English have been used for the same products, that is, Agarbathis, etc. It is not necessary to mention here the names of these manufacturers. It is enough to infer out of it that a wide spread use of the word as a mark for the same products in different parts of the country is being done. It is highly doubtful that the word as such has any distinctive meaning of the products of the first respondent. The first respondent in his impugned application dated 25.8.1994 claimed the user as from 1.1.1987 which he later on through an application in TM 16 dated 6.8.1996 changed to 1.1.1981. Even if we take the user as 1.1.1981, we find that the evidence which the first respondent filed before the Assistant Registrar as discussed by him in his impugned order does in no way entitle the first respondent to the benefit of proviso to Sub-section (1) of Section 9. The use of impugned mark is without any geographical limits. A little sample of numerous products brought on record from the city of Patna with that trade name is enough to visualize the amount of confusion it will lead to amongst the consumers in the country as a whole. The mark is surely not distinctive of the products of the first respondent and has not attained the status of a well known trade mark. Another area which the learned Assistant Registrar chose to decide based upon the opposition was Clauses (a) and (e) of Section 11 of the Trade and Merchandise Marks Act, 1958. Sub-section 2 of Section 9 of the Trade Marks Act, 1999 has been crafted on somewhat similar lines to the provisions of Section 11 of the Trade and Merchandise Marks Act, 1958. There is no gainsaying the fact that such a popular description of a holy incident in the life of an average Hindu which Ramayan is cannot be a source of deception or causing confusion if used by a particular manufacturer in relation to products like Agarbathis, Dhoop, incense which are used as necessary accompaniment of religious rituals in the life of that community. There are innumerable producers of the same product (many with that trademark) throughout the country. Surely, it will be a dangerous source of deception and causing confusion amongst the public. Even if we avoid to examine the impugned mark at the anvil of Clause (b) of Sub-section 2 of Section 9, which creates an absolute prohibition for the registration of a mark which contains or comprises of any material likely to hurt the religious susceptibilities of any class or section of the citizens of India, it shall be worthwhile to mention the observation of a Department related Standing Committee of the Houses of Parliament for the Ministry of Industry which examined the provisions of the Trade Marks Bill, 1993 which ultimately got enacted as the Trade Marks Act, 1999. The Committee* observed: "The Committee is of the opinion that any symbol relating to religion, gods, goddesses, places of worship should not ordinarily be registered as a trademark." In view of this, it was very much necessary for the Assistant Registrar to examine the law laid down in various cases which he has referred to in his order as they were put before him by the learned counsel for the appellant. It shall be pertinent to give a serious thought to the following observations of the Supreme Court in the case of Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 555 referred to by the Assistant Registrar in his order:
"(4) It appears that subsequently the Registrar found that the word "Shree" was used by Hindus as an auspicious symbol and placed even on letter heads and that consequently it was not adapted to distinguish within the meaning of the Act. In course of time, therefore, a practice became established in the Registry whereby the word "Shree" was either refused registration as a trade mark or a disclaimer was enforced if it were made a part of a trade mark. So inflexible had been this practice that barring this particular trade mark No. 3815 there was no other trade mark containing the word "Shree" which had been registered without a disclaimer of the word "Shree". Naturally this circumstance was bound to be regarded as an invidious discrimination and, indeed, pointed reference is said to have been made to it and it was suggested that the Registry should deal impartially and uniformly with all applications in matters relating to practice.".
10. The above observations of the Hon'ble Supreme Court in 1955 are a testimony of the fact that our courts, particularly the apex court, had been sensitive about the religions, social and cultural susceptibilities of various segments of our social fabric. Observations of the Hon'ble Parliamentary Committees in 1993 too are a pointer in the same direction.
11. The appellant has brought on record that first respondent much before the registration of the trade mark had been placing himself as a registered proprietor of the mark. In this connection, he has filed a copy of the notice dated 19.6.1996 sent by the first respondent to him claiming therein that he is the registered proprietor of the mark 'RAMAYAN'. The first respondent has unambiguously mentioned in that notice that apart from having an exclusive right to the use of the trade mark 'RAMAYAN' under the common law, he is the registered proprietor of the trade mark 'RAMAYAN' under the provisions of Trade and Merchandise Marks Act, 1958. It would have been appropriate if the learned Assistant Registrar would have discussed the law laid down in Sagar Beedi Works and Anr. v. Bharath Beedi Works and Anr., 1981 PTC 269, referred to by him in his impugned order. The Hon'ble Bombay High Court held in that case that "The appellants having used the word 'Registered' without the mark being registered is enough to conclude that the user was tainted with dishonesty and accordingly the appellants are not entitled to the discretionary relief under Section 12(3) of the Act." It shall be important to refer to S.P. Chengalvaraya Naidu v. Jagannath, JT 1993 (6) SC 331, where the Hon'ble Supreme Court has held that "........a person, who's case is based on falsehood can be summarily thrown out at any stage of the litigation."
12. In view of the features of the marks as discussed by us earlier in relation to its distinctiveness, causing deception and not having been used in an honest manner, we find that the first respondent is not the proprietor of the mark for the purposes of Section 18(1) of the Trade Marks Act, 1999. Incidentally, it shall be important to make a mention of the reliance placed by the Hon'ble Assistant Registrar on the notifications issued by the Central Government under Section 23(1) of the Trade and Merchandise Marks Act, 1958. It appears that no notifications under the corresponding Section 23(1) of the Trade Marks Act, 1999 have been issued since the said Act was brought into force on 15.9.2003. In view of that, provisions of Section 24 of the General Clause Act, 1897 will operate and the notifications issued under Section 23 (1) of the Trade and Merchandise Marks Act, 1958 shall be deemed to have been issued under the corresponding provision, that is, Section 23 (1) of the Trade Marks Act, 1999. Provisions under Section 23 (1) do not in any way control the provisions of Sections 9 and 18 as discussed earlier. The prohibition created by virtue of notification issued by the Central Government under Section 23(1) is independent of the provisions of the Sections of the Act just referred to above. Similarly, the provisions of those Sections, that is, Sections 9 and 18 which are in no way controlled by the provisions of Section 23(1) are to be given full effect. We accordingly hold that the impugned mark not capable of distinguishing the goods of first respondent from those of others and thus is devoid of any distinctive character and is of such a nature that it shall deceive the public and shall cause confusion.
13. In view of the above, the impugned order of the Assistant Registrar of Trade Marks, the second respondent herein cannot be sustained and consequently the same is set aside. The appeal is allowed and accordingly the application No. 638075 B of the first respondent is rejected and the opposition No. CAL 59644 of the appellant is allowed. No costs.