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HIGH COURT OF CALCUTTA
S. C. GHOSH
CHANDRA BHAN AGARWAL - Appellant
Versus
ARJUNDAS AGARWAL - Respondent
Matter 491 Of 1971
Decided On : FEBRUARY 26, 1973
TRADEMARK - REGISTRATION - CANCELLATION - 'DORA' - DISTINCTIVENESS - ACQUIRED DISTINCTIVENESS - COMMON USE - SECTION 2(J), 2(V), 9(1)(D) OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - WHETHER THE WORD 'DORA' IS A COMMON WORD AND CANNOT BE REGISTERED AS A TRADEMARK - WHETHER THE WORD 'DORA' HAS ACQUIRED DISTINCTIVENESS AND IS ELIGIBLE FOR REGISTRATION.
Fact of the Case:
The petitioner sought cancellation of the respondent's trademark 'dora' for vests and Ganjis, arguing that 'dora' is a common word meaning 'thread' in Hindi and Bengali and cannot be registered as a trademark. The respondent claimed that 'dora' had acquired distinctiveness through long use and advertisements and was eligible for registration.
Finding of the Court:
The court held that the word 'dora' in Bengali does not mean thread, and that the words 'dore' or 'dori' in Hindi and Bengali mean thread. The court further held that the word 'dora' with or without design had acquired distinctiveness in connection with the vests and Ganjis manufactured by the respondents and was rightly registered as a trademark under the Act.
Issues: 1. Whether the word 'dora' is a common word and cannot be registered as a trademark. 2. Whether the word 'dora' has acquired distinctiveness and is eligible for registration.
Ratio Decidendi: 1. The court held that the word 'dora' in Bengali does not mean thread, and that the words 'dore' or 'dori' in Hindi and Bengali mean thread. The court further held that ordinarily, the words 'dore' or 'dori' cannot be registered as a trademark with or without design. However, in this case, evidence of acquiring of distinctiveness by the said word with or without design was produced before the Registrar of Trade Marks and the Registrar accepted such evidence and registered the said word with design as a trademark under the Act. 2. The court held that the word 'dora' with or without design had acquired distinctiveness in connection with the vests and Ganjis manufactured by the respondents and was rightly registered as a trademark under the Act.
Final Decision: The court dismissed the petitioner's application for cancellation of the respondent's trademark 'dora'.
( 1 ) THIS is an application made by the petitioner for the cancellation or revocation of the registration under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the said Act) of the trade mark 'dora' applicable to the Ganjis or vests manufactured by the respondents and being the trade mark No. 252040. The said word 'dora' together with some designs was duly registered as trade mark on October 3, 1968.
( 2 ) THE respondent firm has been carrying on business in the aforesaid Ganjis and hosiery vests since 1962 and has been using the said mark 'dora' as their trade mark in respect of goods manufactured and sold by them. The word 'dora' is an essential feature of the trade mark and together With design was considered to be a distinctive trade mark by the Registrar and was registered as such under the said Act
( 3 ) THE ground for revocation or cancellation of the said trade mark as stated in the petition filed in support of the Notice of Motion is that the word 'dora' in Hindi as well as in Bengali means universally thread or strips and is commonly in daily use.
( 4 ) THE respondent in resisting this application for cancellation or revocation of the said trade mark alleges that the said word 'dora' is a Hindi word and not a feminine personal name. The said word has acquired distinctiveness by long use in connection with vests and Ganjis manufactured by the respondents and acquired the distinction of becoming a trade mark in connection with the abovementioned products of the respondent and as such was registered under the said Act. It appears from the affidavit of the respondent that the said mark 'dora' became very popular with the public and the annual sale of the products of the respondents grew from year to year. In 1967-68 such sale rose to the total sum of Rupees 17,34,098. 39 p. It appears that by long user and advertisements made by the respondents to popularize the said trade mark, the said trade mark 'dora' with or without design has become popular with the purchasing public in whose mind the said mark is connected with the vests manufactured by the respondents.
( 5 ) AFTER the petitioners had applied for registration of the said trade mark 'dora' with or without design, the Registrar of Trade Marks told the respondent that' the word 'dora' constituting the leading feature of the mark was a feminine personal name and could not be registered except in the case of distinctiveness, acquired by the said mark conclusively.
( 6 ) THEREUPON the respondent duly produced evidence of distinctiveness acquired by the said mark 'dora' with or without design before the said Registrar.
( 7 ) AFTER due consideration of the abovementioned evidence, the Registrar of Trade Marks directed circulation or advertisement of the said mark in the Trade Mark Journal. The said trade mark 'dora' with design was fully and thoroughly advertised. No one raised any objection to the registration of the same. Thereupon the Registrar of Trade Mark registered lie said trade mark on October 3, 1968.
( 8 ) CLAUSE (j) of Section 2 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) defines "mark" as follows:--" "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof;"
( 9 ) CLAUSE (v) of the said Section 2 of the Act defines "trade mark" in the following words;" (v) "trade mark" means- (i) in relation to Chapter X (other than Section 81), a registered trade mark or a mark 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 as proprietor to use the mark; and (ii) in relation to the other provisions 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 a
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