IMPORTANT POINT
Exclusive name of the book “RAMAYAN” which has also has become public juris and common to the trade, cannot be registered as a trade mark for any commodity.

JUDGMENT

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trade mark under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958 [repealed by the Trade Marks Act, 1999 (47 of 1999)-in short ‘the Act’] claiming that the impugned mark, being the name of a religious book, cannot become the subject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 d