LAL BABU PRIYADARSHI Vs. AMRITPAL SINGH

Trade and Merchandise Marks Act, 1958

Trade Marks Act,1999

Supreme Court of India (Division Bench (DB)- Two Judge)

Appeal (Civil), 2138 of 2006, Judgment Date: Oct 27, 2014

REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NO. 2138 OF 2006

Lal Babu Priyadarshi .... Appellant(s)

Versus

Amritpal Singh .... Respondent(s)

J U D G M E N T

R.K. Agrawal, J.

1) The present appeal has been filed against the order dated 10.01.2005
passed by the Intellectual Property Appellate Board (in short ‘the Board’)
in Original Appeal No. 35/2004/TM/KOL whereby the Board allowed the appeal
filed by the respondent herein while setting aside the order dated
31.03.2004 passed by the Assistant Registrar of Trade Marks.
2) Brief facts:
(a) One Shri Lal Babu Priyadarshi-the appellant herein, trading as M/s Om
Perfumery, Bakerganj, Daldali Road, Patna made an application to the
Registrar of Trade Marks to register a trade mark by name “RAMAYAN” with
the device of crown in class 3 in respect of incense sticks (agarbattis,
dhoops) and perfumeries etc.
(b) One Shri Amritpal Singh-the respondent herein, was a dealer for the
sale of the products of the appellant herein and was also trading as M/s
Badshah Industries, Chitkohra, Punjabi Colony, Patna. The respondent herein
filed a Notice of Opposition to oppose the registration of aforesaid trade
mark under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the
Trade and Merchandise Marks Act, 1958 [repealed by the Trade Marks Act,
1999 (47 of 1999)-in short ‘the Act’] claiming that the impugned mark,
being the name of a religious book, cannot become the subject matter of
monopoly for an individual.
(c) The Assistant Registrar of Trade Marks, after holding that the
impugned trade mark consists of device of crown and the word “RAMAYAN” is
capable of distinguishing the goods and is not included in the list of
marks not registrable under the Act, by order dated 31.03.2004, dismissed
the application filed by the respondent herein.
(d) Being aggrieved by the order dated 31.03.2004, the respondent herein
preferred an appeal before the Board being Original Appeal No.
35/2004/TM/KOL. The Board, by order dated 10.01.2005, set aside the order
dated 31.03.2004, passed by the Assistant Registrar of Trade Marks.
(e) Aggrieved by the order dated 10.01.2005, the appellant has filed this
appeal by way of special leave.
3) Heard Ms. Anuradha Salhotra, learned counsel for the appellant and
Mr. Sudhir Chandra, learned senior counsel for the respondent.
4) The sole question for consideration before this Court is whether the
registration of the word “RAMAYAN” as a trade mark, being the name of a
Holy Book of Hindus, is prohibited under Section 9(2) of the Trade Marks
Act, 1999?
Rival submissions:
5) Learned counsel for the appellant submitted that the appellant was in
the business of manufacturing, trading and marketing of incense sticks
since 1981 and the respondent herein was a dealer of the appellant herein.
The goods under the trade mark “RAMAYAN” have been advertised by him
through various means including the publication of cautionary notices in
newspapers. Learned counsel further submitted that through extensive use,
wide advertisement and the excellent quality of the products, the trademark
“RAMAYAN” and the carton in which the products are sold has become
distinctive in such a manner that use of the same or similar trademark or
carton by any other person will cause confusion and deception in the trade
and amongst the public. The sale was done through a network of dealers and
distributors and the respondent herein was a dealer of the appellant
herein. Learned counsel submitted that after the termination of
dealership, the respondent herein started selling incense sticks under the
trade mark “RAMAYAN” written in the same style and manner.
6) Learned counsel further contended that the mere fact that the trade
mark, being the name of a religious book, cannot be a sufficient ground for
refusal of registration under Section 9(2) of the Act and is not based on
evidence on record that the feelings of any section of the Hindus having
been hurt by its use in relation to incense sticks. She further submitted
that the Assistant Registrar of Trade Marks rightly held that the impugned
trade mark consists of device of crown and the word is capable of
distinguishing the goods of the appellant herein and the trade mark is not
included in the list of marks not registrable under the Act. She further
claimed that it has already been proved before the Court of Assistant
Registrar that the appellant was using the trade mark since 1981 and hence,
is the prior user in comparison to the respondent. According to the
learned counsel, the Board, totally misconstrued the observations of the
Standing Committee in the Eighth Report on the Trade Marks Bill, 1993.
Relying upon Clause 13.3 of the said report, it was submitted that even
though the Committee had observed that “any symbol relating to religious
gods, goddesses, places of worship should not ordinarily be registered as a
trade mark”, it specifically refrained from prohibiting registration of
such marks. It was further submitted that the Board has erroneously relied
upon the decision of this Court in Registrar of Trade Marks vs. Ashok
Chandra Rakhit AIR 1955 SC 558 by proceeding on the basis that the said
case was an authority on the question that all religious names or symbols
are prohibited from being registered whereas the fact of the matter is that
this Court had merely upheld the concurrent findings of the Registrar and
the High Court that the word ‘SHREE’ was incapable of distinguishing the
goods of any one trader. The said case is also distinguishable by the fact
that it was the invariable practice of the trade mark office not to
register the word ‘SHREE’ but this is not so with the word “RAMAYAN”.
7) Relying upon a decision of this Court in Mumbai International Airport
Private Limited vs. Golden Chariot Airport and Another (2010) 10 SCC 422,
it is further submitted that the respondent herein had himself claimed the
use of the identical mark and therefore, it did not lie in his mouth to
object to the registration of the word in the name of the appellant. She
further contended that the Board ought to have seen that there are several
cases which indicate that the use of the names of Hindu deities as trade
mark is a common practice and no one has complained about the same being
sensitive to Hindu religious sentiments for which reliance was placed on a
decision of this Court in K.R. Chinna Krishna Chettiar vs. Sri Ambal & Co.
AIR 1970 SC 146.
8) Learned counsel also placed reliance on Corn Products Refining Co.
vs. Shangrila Food Products Ltd. 1960 (1) SCR 968 in support of the
submission that before the applicant can seek to derive assistance for the
success of his application from the presence of a number of marks having
one or more common features which occur in his mark also, he has to prove
that those marks had acquired a reputation by user in the market.
9) Learned counsel finally contended that the Board erred in law while
setting aside the judgment of the Assistant Registrar of Trade Marks while
holding adversely about its distinctiveness, the mark causing deception and
not having been used in an honest manner.
10) Learned senior counsel for the respondent contended that the impugned
mark, being name of a religious book, cannot become the subject matter of
monopoly for an individual. He further contended that the 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. It was also contended that the mark “RAMAYAN” is not registrable
since it is the name of a famous and well known religious book. It was
also claimed that more than 20 traders in Patna and many more are using the
trade mark and thus it has become public juris. In support of the same,
learned senior counsel placed reliance upon a decision of this Court in
National Bell Co. vs. Metal Goods Mfg. Co. (P) Ltd. and Another 1970 (3)
SCC 665. He further submitted that the impugned mark is identical with the
respondent’s mark “BADSHAH RAMAYAN” which is pending registration and the
impugned registration will cause harassment to other traders and purchasing
public would be bound to be confused and deceived. Learned senior counsel
finally claimed that the Board was right in setting aside the order dated
31.03.2004 passed by the Assistant Registrar of Trade Marks.
11) We have carefully gone through the relevant documents and perused the
material on record.
Discussion:
12) The appellant herein filed an application dated 25.08.1994 being No.
638073-B in class 3 for registration of a trade mark consisting of the word
“RAMAYAN” with the device of crown in respect of incense sticks
(agarbatties) and perfumeries etc. The appellant herein claimed the user
since 01.01.1987. He further filed a request to rectify the user from
01.01.1981 which was allowed by the Assistant Registrar of Trade Marks.
While opposing the application in class 3 for registration of the trade
mark, the respondent herein filed a notice of opposition under Sections 9,
11(a), 11(b), 11(e), 12(1) and 18(1) of the Act. He claimed the use of the
trade mark “BADSHAH RAMAYAN” prior to the appellant herein. The respondent
herein put forth an objection that the impugned mark, being name of a
religious book, cannot become the subject matter of monopoly for an
individual. He further added that his application for the registration of
the same trade mark claiming user since 05.11.1986 is pending for
registration. The application was further opposed with the reasoning that
it carries a large sentimental value for the people and therefore, no one
can claim sole right to the use of such a word. It was also admitted by
the respondent herein that more than 20 traders in Patna are using the
trade mark “RAMAYAN”. Finally, it was submitted that the impugned mark is
identical with the respondent’s mark “BADSHAH RAMAYAN” which is pending
registration and the impugned registration will cause confusion among
general public. Though the Assistant Registrar of Trade Marks dismissed
the application filed by the respondent herein, the Board set aside the
said order after holding that the trade mark “RAMAYAN” is not distinctive
of the goods of the appellant as it is being used as a mark for the same
products by more than 20 traders in Patna and in different parts of the
country and has become public juris and common to the trade.
13) In view of the above, it is relevant to mention Section 9 of the Act
which reads as under:-
“9. 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 bona fide 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 trade mark.

(2) A mark shall not be 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 hurt the religious
susceptibilities of any class or section of the citizens of India;

(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

Explanation. – For the purposes 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 ground for refusal of registration.”

This section stipulates that the trade marks which are devoid of any
distinctive character or 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 goods or
rendering of the services or other characteristics of the goods or service
or which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and established
practice of the trade shall not be registered, unless it is shown that the
mark has in fact acquired a distinctive character as a result of use before
the date of application. It also provides that a mark shall not be
registered as trade marks if (i) it deceives the public or causes
confusion, (ii) it contains or comprises of any matter likely to hurt the
religious susceptibilities, (iii) it contains scandalous or obscene matter,
(iv) its use is prohibited. It further provides that if a mark consists
exclusively of (a) the shape of goods which form the nature of goods
themselves, or (b) the shape of goods which is necessary to obtain a
technical result, or (c) the shape which gives substantial value of the
goods then it shall not be registered as trade mark.
14) From Clause 13.3 of the Eighth Report on the Trade Marks Bill, 1993
submitted by the Parliamentary Standing Committee, we find that the
Committee expressed its opinion that any symbol relating to Gods,
Goddesses, places of worship should not ordinarily be registered as a trade
mark. However, the Committee did not want to disturb the existing trade
marks by prohibiting their registration as it will result in a chaos in the
market. At the same time, the Committee trusted that Government will
initiate appropriate action if someone complaints that a particular trade
mark is hurting his religious susceptibilities. This report was presented
on 21.04.1994. When the report was presented, the appellant’s trade mark
had not been registered and the application filed by the respondent herein
opposing its registration was dismissed only on 31.03.2004 by the Assistant
Registrar of Trade Marks.
15) The word “RAMAYAN” represents the title of a book written by
Maharishi Valmiki and is considered to be a religious book of the Hindus in
our country. Thus, using exclusive name of the book “RAMAYAN”, for getting
it registered as a trade mark for any commodity could not be permissible
under the Act. If any other word is added as suffix or prefix to the word
“RAMAYAN” and the alphabets or design or length of the words are same as of
the word “RAMAYAN” then the word “RAMAYAN” may lose its significance as a
religious book and it may be considered for registration as a trade mark.
However, in the present case, we find that the appellant had applied for
registration of the word “RAMAYAN” as a trade mark. We also find that in
the photographs, after adding “OM’s” to the word “RAMAYAN”, at the top and
in between “OM’s and RAMAYAN”, the sentence, “Three Top Class Aromatic
Fragrance”, is also written. Thus, it is not a case that the appellant is
seeking the registration of the word “OM’s RAMAYAN” as a trade mark.
Further, from the photographs, we find that the photographs of Lord Rama,
Sita and Lakshman are also shown in the label which is a clear indication
that the appellant is taking advantage of the Gods and Goddesses which is
otherwise not permitted.
16) In National Bell Co. (supra), this Court has held that the
distinctiveness of the trade mark in relation to the goods of a registered
proprietor of such a trade mark may be lost in a variety of ways e.g. by
the goods not being capable of being distinguished as the goods of such a
proprietor or by extensive piracy so that the marks become public juris.
The principle underlying clause (c) of Section 32 is that the property in a
trade mark exists so long as it continues to be distinctive of the goods of
the registered proprietor in the eyes of the public or a section of the
public. If the proprietor is not in a position to use the mark to
distinguish his goods from those of others or has abandoned it or the mark
has become so common in the market that it has ceased to connect him with
his goods, there would hardly be any justification in retaining it on the
register.
17) It has also come on record that the word “RAMAYAN” is being used as a
mark for the similar products by more than 20 traders in Patna and in
different parts of the country, and therefore, it has become public juris
and common to the trade.
Conclusion:
18) There are many holy and religious books like Quran, Bible, Guru
Granth Sahib, Ramayan etc., to name a few. The answer to the question as
to whether any person can claim the name of a holy or religious book as a
trade mark for his goods or services marketed by him is clearly ‘NO’.
19) Moreover, the appellant has not been able to establish that the word
“RAMAYAN” for which he has applied the trade mark had acquired a reputation
of user in the market inasmuch as, we find that there are more than 20
traders in the city using the word “RAMAYAN” as a mark for the similar
products and also in different parts of the country.
20) On a perusal of the artistic work said to have been created, there is
no doubt that both the marks are identical in design, colour, scheme and
the reproduction of photographs is in such a manner that an ordinary buyer
would reasonably come to a mistaken conclusion that the article covered by
one brand can be the article covered by the other. Both the parties have
claimed to be manufacturing units engaged in certain goods.
21) Further, the respondent herein claimed that though he had been in the
business since 1980, he had developed and published the artistic work in
1986 and has also been using the mark as a trademark and claiming use since
1986 whereas the appellant herein claimed use of the trademark since 1987.
However, by filing an application to the concerned authority, the appellant
has claimed the use since 1981. Further, in various pleadings in the Title
Suits filed by the respondent herein, the appellant herein has admitted the
use and publication of the artistic mark of the respondent before the date
of claim of the first use by the appellant, that is, 1987. From these
facts, it is clear that the respondent herein was using the artistic mark
earlier in point of time to that of the appellant herein.
22) In view of the foregoing discussion, we do not find any irregularity
in the order passed by the Board dated 10.01.2005, consequently, the appeal
fails and is accordingly dismissed. However, the parties are left to bear
their own costs.

...…………….………………………J.
(RANJAN GOGOI)

.…....…………………………………J.
(R.K. AGRAWAL)

NEW DELHI;
OCTOBER 27, 2015.

ITEM NO.1A COURT NO.14 SECTION XVI
(For Judgment)
S U P R E M E C O U R T O F I N D I A
RECORD OF PROCEEDINGS

Civil Appeal No(s). 2138/2006

LAL BABU PRIYADARSHI Appellant(s)

VERSUS

AMRITPAL SINGH Respondent(s)

Date : 27/10/2015 This appeal was called on for pronouncement of
judgment today.

For Appellant(s) Mr. K. V. Mohan, AOR

For Respondent(s) Mr. Sohan Singh Rana, Adv.
Mrs. Bindra Rana, Adv.
For M/s S. S. Rana & Co.

Hon'ble Mr. Justice R.K. Agrawal pronounced the reportable judgment
of the Bench comprising Hon'ble Mr. Justice Ranjan Gogoi and His Lordship.
The appeal is dismissed in terms of the signed reportable judgment.

(R.NATARAJAN) (SNEH LATA SHARMA)
Court Master Court Master
(Signed reportable judgment is placed on the file)

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