Full Judgment Text
THE HIGH COURT OF DELHI AT NEW DELHI
Judgment delivered on : 09.07.2007
WP(C) No.19678/2004
RAJINDER KUMAR AGGARWAL ...Petitioner
- versus -
UNION OF INIDA & ANOTHERS ...Respondents
Advocates who appeared in this case:
For the P etitioner : Mr Manmohan Singh.
For the Respondent No.1 : Mr Rakesh Tiku.
For the Respondent No.2 : Mr Sudhir Chandra Aggarwal, Sr Advocate with
Mr Amarjeet Singh, Mr Gurvinder Singh, Mr Gurpreet Singh,
Mr Abhyudai Singh and Mr Bhagirati.
CORAM:-
HON'BLE MR JUSTICE BADAR DURREZ AHMED
1. Whether Reporters of local papers may be allowed
to see the judgment? YES
2. To be referred to the Reporter or not? YES
3. Whether the judgment should be reported in Digest? YES
BADAR DURREZ AHMED, J
1. The petitioner, Rajinder Kumar Aggarwal, is the proprietor of
Aggarwal Sweets India, a shop selling sweets and n amkeens at 24, West Patel
Nagar, New Delhi. The respondent No.2 is the Aggarwal Sweet Corner at 3/33,
Double Story, Tilak Nagar, New Delhi which is the trading concern of Shri
Ashok Kumar Aggarwal and Shri Vinod Kumar Aggarwal. The petitioner is
aggrieved by the dismissal of his appeal by the Intellectual Property Appellate
Board by its order dated 09.09.2004. The effect of the dismissal of the appeal
is that the orders passed by the Assistant Registrar, rejecting the opposition
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filed by the petitioner to the registration of the trademarks AGGARWAL and
AGGARWAL SWEET CORNER under application Nos 453308B and 453309
were confirmed. Consequently, the respondent No.2 was entitled to the
registration of the marks AGGARWAL and AGGARWAL SWEET CORNER.
Of course, the latter trademark contained a disclaimer to the effect that it shall
give no right to the exclusive use of the words “SWEET CORNER”.
2. According to the petitioner, the word AGGARWAL cannot be
registered as a trademark unless distinctiveness is established on the part of the
applicant. The provisions of Section 9 of the Trade and Merchandise Marks
Act, 1958 (hereinafter referred to as “the 1958 Act”) were referred to by the
petitioner to indicate that without distinctiveness, the word AGGARWAL,
because it was both a surname and the name of a sect or caste, could not be
registered. On the other hand, the respondent No.2 contends that the word
AGGARWAL can be registered as a trademark. It was also contended on
behalf of the respondent No.2 that, in any event, this issue as to whether it can
or cannot be registered as a trademark, cannot be debated in a writ petition.
3. I may point out that, as per the order dated 16.03.2007 passed by
this Court, the only point that requires consideration in this writ petition is
whether the word AGGARWAL can be registered as a trademark in law? An
additional plea was also raised by Mr Sudhir Chandra, the learned Senior
counsel, who appeared on behalf of the respondent No.2 that this issue cannot
be debated in a writ petition.
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4. Before a discussion of the points in issue is taken up, it would be
appropriate to indicate the sequence of events. On 30.04.1986, the respondent
No.2 made the two aforesaid applications for registration of the trademarks
AGGARWAL and AGGARWAL SWEET CORNER in respect of sweets and
namkeens . In both applications, the respondent No.2 claimed user since
01.06.1984. On 01.04.1990, the applications were advertised in the Trade
Mark Journal. On 18.05.1990, the petitioner filed its opposition being DEL-
6766 under Section 21 of the 1958 Act raising objections under Sections 9, 11
and 18 of the said Act. On 17.07.1991, the respondent No.2 filed a counter
statement to the opposition filed by the petitioner. On 16.03.1992, the
petitioner filed its evidence under Rule 53 in the shape of affidavits of six
persons. Apparently, on 10.08.1994, the matter was heard by the Assistant
Registrar. Although, according to the petitioner, the respondent No.2 had not
filed any evidence in support of its application. By an order dated 06.09.1994,
the Assistant Registrar rejected the petitioner's opposition and accepted the
respondent No.2's applications. Being aggrieved, the petitioner filed an appeal
on 13.09.1994 under Section 109(2) of the 1958 Act before this court. The said
appeal was numbered as CM(M) 419/1994. On 23.04.1996, in view of Section
100 of the Trade Marks Act, 1999 (which had been enacted in the meanwhile),
this court transferred the appeal to the Intellectual Property Appellate Board.
The appeal was re-numbered as TA 95/2003/TM/DEL. Three other appeals
connected with the question of registration of the trademarks AGGARWAL
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and AGGARWAL SWEET CORNOR in favour of the respondent No.2 were
also pending before this court. They were also transferred and they were
numbered as TA Nos 94, 97 & 100/2003. By virtue of the impugned order
dated 09.09.2004, the Intellectual Property Appellate Board dismissed all the
appeals and confirmed the orders passed by the Deputy Registrar / Assistant
Registrar as the case may be. The effect of the order dated 09.09.2004 was that
the respondent No 2's right to have the trademarks AGGARWAL and
AGGARWAL SWEET CORNER registered in its favour was upheld.
5. As noted above, the main question involved in this petition is
whether the word AGGARWAL can be registered as a trademark. It is admitted
by all the parties that the 1958 Act would apply. It is also admitted by the
parties that the provisions of Section 9 (1) (2) and (3) of the said Act would be
applicable because the question of registration of the trademark in part A of the
register is in issue. The said provisions read as under :
“ 9. Requisites for registration in Parts A and B of the
register. - (1) A trade mark shall not be registered in Part A of
the register unless it contains or consists of at least one of the
following essential particulars, namely :-
(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
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being according to its ordinary signification, a
geographical name or a surname or a personal
name or any common abbreviation thereof or
the name of a sect, caste or tribe in India;
(e) any other distinctive mark.
(2) 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.
(3) For the purposes of this Act, 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 the registration.”
6. Mr Sudhir Chandra, the learned counsel appearing on behalf of the
respondent No.2, sought to analyze the provisions of Sections 9 (1) and (2). He
submitted that under Section 9 (1) of the 1958 Act, a trade mark cannot be
registered in Part A of the Register unless it contains or consists of at least one
of the essential particulars specified in sub-clauses (a) to (e). According to him,
the simple reading of Section 9(1) is that if a trade mark contains or consists of
the name of a company, individual or firm represented in a special or particular
manner, the said mark would qualify for registration under clause (a). It was
further contended that similarly if a trade mark contains or consists of the
signature of the applicant for registration or some predecessor in his business, it
would qualify for registration under clause (b). If a trademark contained or
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consisted of one or more invented words, the same would qualify for
registration under clause (c). With regard to clause (d), it was submitted, if a
trade mark contains or consists of 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
same would qualify for registration under the said clause. It was also submitted
that a trade mark which is otherwise distinctive would, in any event, qualify for
registration in view of clause (e).
7. It was thus contended that the trademark falling in clauses (a) to (e)
qualified for registration in Part A of the register without there being any
requirement of establishing distinctiveness by evidence of user. No such
evidence is necessary, according to Mr Sudhir Chandra under Section 9(1) of
the 1958 Act. He submitted that sub-section (2) of Section 9 deals with the
trademarks consisting of names, signatures or words which would qualify for
registration only upon evidence of distinctiveness. The evidence of
distinctiveness is required to be shown in respect of trademarks which consist
of names, signatures or words, other than those falling in the description in
clauses (a), (b), (c) and (d) of sub-section (1). According to Mr Sudhir
Chandra, this means that caste names, regional names, surnames etc having
reference to character and quality of goods can be registered if they have
acquired distinctiveness by user.
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8. It was further contended that the trademarks consisting of names,
signatures or words, can be divided into two categories :- (1) those falling
under sub-section (1) of Section 9; and (2) those not falling under sub-section
(1) of Section 9 but which are governed by sub-section (2) of Section 9. It was
submitted that for a trademark falling in the first category, there is no
requirement of law for filing evidence of distinctiveness of the trademark if it
otherwise qualifies under any of the clauses (a) to (d) of section 9(1). It was
then contended that the 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
would qualify for registration if the same had 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. It was further submitted that
applying the above principles to the present case, the application No.453309 in
Class 30 consists of the name of the firm AGGARWAL SWEET CORNOR
represented in a particular manner and would thus qualify for registration as per
clause (a) of sub-section (1) of Section 9 without any requirement of
establishing distinctiveness by evidence. Moreover, it was contended, the
surname AGGARWAL has no direct reference to the character or quality of the
goods for which the registration is desired and has been granted by the
Registrar and the Intellectual Property Appellate Board. AGGARWAL is not
such a surname which in its ordinary signification has reference to sweets or
edible articles for human consumption. Consequently, according to Mr Sudhir
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Chandra, the trademark AGGARWAL would also qualify for registration under
clause (d) of sub-section (1) of Section 9. It was lastly submitted that even
otherwise the names, signatures or words could qualify for registration under
sub-section(2) of Section 9 but upon evidence of distinctiveness. It was,
therefore, contended that there is no prohibition contained in Section 9 of the
1958 Act for registration of, inter alia , a surname which has no direct reference
to the character or quality of the goods and are not associated in their ordinary
signification with the goods for which the registration is desired. The condition
of evidence of distinctiveness would apply only to those names which do not
fall in clauses (a) to (d) of sub-section (1) of Section 9.
9. On the other hand, Mr Manmohan, the learned counsel for the
petitioner submitted that a surname or a name of a sect / caste cannot be
registered unless and until there is clear evidence of its distinctiveness.
10. Upon examining the provisions of Section 9(1) and (2) of the 1958
Act and considering the submissions made by the learned counsel, I am of the
view that the submissions made by Mr Manmohan deserves to be accepted and
those made by Mr Sudhir Chandra can only be accepted in part. Insofar as the
provisions of Section 9(1)(a) are concerned that was not in issue before the
Assistant Registrar nor was it in issue before the Intellectual Property Appellate
Board. And, therefore, it would not be proper for this court to examine as to
whether the respondent No 2's application fell within Section 9(1)(a) of the
1958 Act. The only issue that arose was with regard to the word AGGARWAL
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being registrable in view of the fact that it was a surname. It is another matter
that it also happens to be the name of a sect / caste in India. That does not alter
the position inasmuch as a surname and name of a sect / caste stand on the same
footing. In this petition, we are only concern as to whether the word
AGGARWAL, which is admittedly a surname, can be registered under Section
9(1) (d) or under Section 9(2). Clause (d) of Section 9(1) has two parts. The
first part relates to one or more words having no direct reference to the
character or quality of the goods. The second part creates an exclusion in
respect of the said one or more words which in their ordinary signification are
not geographical names, surnames, personal names or any common
abbreviation thereof or the names of the sect, caste or tribe in India. The two
parts are linked by the conjunctive word “and”. This would mean that if a word
were to qualify for registration under clause (d), it must first pass the test of not
having any direct reference to the character or quality of the goods. Once it
clears this test, it must face the second test and that is that the word must not,
according to its ordinary signification, be, inter alia , a surname or a name of the
sect / caste in India. So, although a word may have no direct reference to the
character or quality of the goods, it may still not be registrable under the said
clause (d) if it happens to be, according to its ordinary signification, inter alia , a
surname or the name of a sect/caste in India. This is where Mr Sudhir Chandra
has gone wrong in submitting that since the surname AGGARWAL has no
direct reference to the character or quality of the goods, it would qualify for
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registration under clause (d) of sub-section (1) of Section 9. As pointed out
above, this is not correct. If a word is to qualify for registration under clause
(d), it has to pass both the tests and if it fails even one it would not fall under
clause (d). The two tests being that the word must not have a direct reference
to the character or quality of the goods and that it must not, inter alia, be a
surname or name of a sect / caste in India. The word AGGARWAL passes the
first test inasmuch as it has no direct reference to the character or the quality of
the goods in question i.e., sweets and namkeens . But, it fails the second test. It
is a surname and it is also the name of a sect/caste in India.
11. This being the position AGGARWAL by itself cannot be registered
under Section 9(1). However, it can be registered by invoking the provision of
Section 9(2) which clearly and specifically provides that a name, signature or
word, other than such as fall within the description in clauses (a) to (d) of sub-
section (1) shall not be registrable in Part A of the register except upon
evidence of its distinctiveness. This makes it clear that a word which happens
to be a surname or the name of a sect/caste in India, cannot be registered under
Section 9(1) but can be registered as a trademark upon evidence of its
distinctiveness. Thus, the word AGGARWAL is certainly registrable in part A
of the Register but there must be clear evidence of its distinctiveness.
12. It is here where sub-section (3) of Section 9 of the 1958 Act comes
into play. This provision defines the expression “distinctive” in relation to the
goods in respect of which a trade mark is proposed to be registered to mean
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“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 the
registration.
13. There is one aspect of the matter which needs clarification and that
is that there is a difference between the user and distinctiveness in relation to a
trade mark. It is possible that a proprietor of a trademark may be using the
same for decades without acquiring distinctiveness. An example of this would
be when there are several users of the same trade mark for over a length of time
then, although each one of them would have evidence to establish user, none of
them would be able to prove distinctiveness in relation to their products.
Therefore, the difference between user and distinctiveness must be kept in the
forefront. While distinctiveness cannot be established without evidence of
user, the converse is not true. In other words there may be user without
distinctiveness. Reference may be made to paragraphs 8-125, 8-126 and 8-127
th
of Kerly's Law of Trade Marks and Trade Names 14 Edition : Thomson
Sweet & Maxwell which is to the following effect :-
“Mere Evidence of Use
8-125 There has been a tendency for applicants seeking to
demonstrate distinctiveness acquired through use, to rely
on financial evidence of turnover and advertising
14
expenditure. This type of financial evidence is a
14 This tendency may have been encouraged by the standard form of evidence of use which has been
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necessary part of any attempt to prove acquired
distinctiveness, but it cannot do the job by itself. As
Jacob J. has said :
“Mere evidence of use of a highly descriptive
or laudatory word will not suffice, without
more, to prove that it is distinctive of one
particular trade – is taken by the public as a
badge of origin. This is all the more so when
the use has been accompanied by what is
undoubtedly a distinctive and well-recognized
15
trade mark.”
and, later in the same judgment :
“I have already described the evidence used to
support the original registration. It was really no
more than evidence of use. Now it is all too easy
to be beguiled by such evidence. There is an
unspoken and illogical assumption that “use
equals distinctiveness”. The illogicality can be
seen from an example : no matter how much use
a manufacturer made of the word “Soap” as a
purported trade mark for soap the word would
16
not be distinctive of his goods.”
8-126 To similar effect, Morritt L.J. in Bach flower Remedies :
“First, use of a mark does not prove that the mark is
distinctive. Increased use, of itself, does not do so
either. The use and increased use must be in a
17
distinctive sense to have any materiality.”
8-127 This is the point. It is necessary to combine evidence of
the scale of use provided by financial information with
evidence that the use has been so as to distinguish – on
the product, in relation to the service, in advertising or
promotion. Sometimes the way in which the mark is
part of the Registry Work Manual for some years. The apparent concentration on turnover and
advertising expenditure may obscure the fact that what is required is evidence of distinctiveness and
not evidence of use.
15 British Sugar [1996] R.P.C. 281 at 286
16 At 302
17 [2002] R.P.C. 513 at 530
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presented to the public indicates whether the owner
really trusts the mark to function as a trade mark.”
It is, therefore, clear that mere user would not establish distinctiveness and
unless and until clear evidence of distinctiveness is given, a surname, such a
AGGARWAL, cannot be registrable. The distinctiveness has also to be
construed in the light of the provision of Section 9(3).
14. Let me now consider the impugned order dated 09.09.2004 passed
by the Intellectual Property Appellate Board. A careful examination of the
order 'reveals' that there is no discussion with regard to the evidence of
distinctiveness of the surname AGGARWAL in relation to the respondent No
2's goods. In fact, it appears that the Appellate Board was only concerned with
the issue of user and once that was established, according to it, it was sufficient
for the purpose of the case. The following observation in the impugned order
would indicate this:-
“We believe that so much of the documentary evidence for
this period is enough to establish that there was a user as
from the date claimed in the application and it was a
consistent user.”
As already indicated above, mere evidence of use is not sufficient in itself to
establish distinctiveness. Unless and until distinctiveness is proved, a word such
as AGGARWAL which happens to be a surname is not registrable. I find that
the Appellate Board has unfortunately not examined the issue of distinctiveness
at all and has only concentrated on user. While dismissing the appeals and
rejecting the petitioner's case, the Appellate Board also observed:-
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“16. We have heard both the counsel very cerefully
and have gone through the various documents filed by them
in support of their claim. We find that sine qua non for
entitlement under section 9 is that one who contests for the
mark should be prior user in time and even should have been
consistently using the mark from the date so claimed.
Respondent, in this case, filed his applications on 30.4.86
and has claimed his use from 1.6.84. He has adduced
sufficient evidences to prove his claim that he had been
extensively and consistently making use of both the marks
from 1.6.84.”
The above observation suffers from two infirmities. The first infirmity is
statement that only a person with an established prior use can contest the
registration of a mark. Section 21 of the 1958 Act which refers to opposition to
registration begins with the words “any person may”. It is not at all a condition
for moving any application opposing a registration that the applicant must be a
prior user or even a user at all. The second infirmity which has already been
dealt with earlier is that the Appellate Board has again displayed its concern
with the question of the respondent No 2 proving his claim of user since 1.6.84
rather then examining the material issue of distinctiveness.
15. This brings me to the question of maintainability of the writ
petition. It has been argued on behalf of the respondent No.2 that the matters
and the issues involved in the present petition are not to be gone into in exercise
of this court's power under Articles 226 / 227 of the Constitution of India. It is
correct that this court is not sitting as a court of appeal and cannot re-appreciate
evidence and examine factual matters. But, what I find in the present case is
that the Appellate Board has not even broached the subject of distinctiveness
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and has been overly concerned with establishing the user of the respondent
No.2 from the date it claimed in its application for registration. This is not a
case of re-appreciation of evidence. It is a case where the Appellate Board has
not examined any material at all with regard to distinctiveness. In fact, it has
not returned any finding with regard to distinctiveness. A writ petition in such
a situation would definitely be maintainable. It would, however, not be
appropriate for this court to examine and determine the factual issues of
distinctiveness. That is best left to the Appellate Board. Accordingly, the
impugned order is set aside and the matter is remanded to the Intellectual
Property Appellate Board for the purposes of considering the question as to
whether the word AGGARWAL which, admittedly is a surname, has acquired
sufficient distinctiveness in relation to respondent No.2's goods to be registrable
under the 1958 Act.
This writ petition stands disposed of. No order as to costs.
BADAR DURREZ AHMED
(JUDGE)
July 09, 2007
M
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