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1974 Supreme(Mad) 270
Madras High Court
KAILASAM,VARADARAJAN
Lakshmi Narayan Karva - Appellant
Versus
Satyanarayanan Khubchand Karva - Respondent
Decided On : 07/11/1974
B. T. Seshadri, for Appellants, A. L. Somayajee, for Aiyer and Dolia and S. P. L. Palaniappan, for Respondent.
A trademark, considered as a whole, may be distinctive even if its component parts are not distinctive in themselves.
Headnote:
TRADEMARK - RECTIFICATION OF REGISTER - REMOVAL OF TRADEMARK - DISTINCTIVENESS - TRANSFER TO PART B OF REGISTER - [SECTIONS 9, 18(4), 28, 29(2), 56] - The court held that the appellant's trademark, considered as a whole, is distinctive and that it is wrong to dissect the mark and show that each of its component parts is not distinctive in itself, and as a result of that process to conclude that the mark is wholly not distinctive. The court directed the Assistant Registrar of Trade Marks to transfer the appellant's trademark from Part A to Part B of the register.
Fact of the Case:
The appellants, a partnership firm, applied for registration of their trademark consisting of the word 'Salammoniac' appearing between two devices of a crescent and a star with the letters 'RLK' appearing within each device. The Assistant Registrar allowed the respondents' application for rectification of the Register of Trade Marks by expunging the appellants' trademark. The appellants filed an appeal against the order.
Finding of the Court:
The court found that the respondents are persons aggrieved and that the appellant's trademark, considered as a whole, is distinctive. The court held that the appellant's trademark should be transferred from Part A to Part B of the register.
Issues: Whether the respondents are persons aggrieved.
Ratio Decidendi: The court held that the respondents are persons aggrieved as they are rival traders against whom the appellants have taken an infringement action.
Final Decision: The appeal was allowed with costs and the judgment of the lower court was set aside. The Assistant Registrar of Trade Marks was directed to transfer the appellant's trademark from Part A to Part B of the register.
VARADARAJAN, J. :- This Letters Patent Appeal is directed against the judgment of Maharajan, J. in C. M. A. 151 of 1969, which was filed by the appellants against the order of the Assistant Registrar of Trade Marks, Madras, in an application filed by the respondents under Sections 46 and 56 of the Trade and Merchandise chandise Marks Act, 1958, in the matter of the appellant's trade mark No. 217448. The Assistant Registrar allowed the respondents' application for rectification of the Register of Trade Marks by expunging the appellants' trade mark. The appellants are a partnership firm carrying on business under the name and style of Ramachandra Lakshminarayana Karva at Begum Bazar, Hyderabad, Andhra Pradesh, in certain commodities including chloride used for industrial purposes. The respondents also are a partnership firm carrying on business at Begum Bazar, Hyderabad in ammonium chloride. The appellants' trade mark consists of the word 'Salammoniac' appearing in between the two devices of a crescent and a star with the letters 'RLK' appearing within each device of the crescent, and it has been registered in respect of ammonium chloride used for industrial purposes. The respondents' trade mark consists of a label containing a device of two stars and crescents with the letters 'KSI' within the crescent device and the expression 'AMCLO' in between the two devices. The appellants applied for registration of their trade mark in Part A of the Register of Trade Marks on 30-8-1963 on the allegation that the trade mark was first adopted or invented by their concern in the year 1956 for use in ammonium chloride (Navasagar) business and that it had been in use continuously from 1956 exclusively and without any interference of interruption from any quarters whatsoever. They also alleged in the application for registration that ammonium chloride worth several lakhs had been sold under the said trade mark and that the trade mark had become very popular and deserved protection of law. After examination of the application, the Assistant Registrar informed the appellants inter alia that the letters 'RLK' appearing on the mark were not considered prima facie distinctive and were not registerable in part A of the Register except upon evidence of distinctiveness under Section 9 of the Act, that the word 'Salammoniac' constituting the leading feature of the trade mark was purely descriptive of the goods and was not distinctive within the meaning of Section 9 of the Act and that the mark conflicted with certain trade marks, the particulars of which were furnished to the appellants. Thereupon, the appellants disclaimed the right to the exclusive use of the device of a crescent and star and the expression 'Salammoniac' and the trade mark was accepted for registration by the order of the Assistant Registrar on 9-3-1964, and the application as accepted for registration was advertised in the Trade Marks Journal dated 1-6-1964. Subsequently, the appellants instituted O. S. 13 of 1966, in the City Civil Court, Hyderarbad at Secunderabad, for an injunction restraining the respondents from ever manufacturing or selling ammonium chloride or Navasagar with the respondents' trade mark impressed thereon. They have alleged in paragraph 12 of the plaint in that suit that they have suffered very much on account of the respondent's introducing the goods under an imitation of their trade mark and that the continued use of the trade mark by the respondents would cause to the appellants incalculable and irreparable injury which cannot be adequately compensated by money. The respondents contended in their written statement in that suit that it was the appellants that tried to injure them out of malice and jealously by using their trade mark. It is only after the institution of that suit the respondents filed their application before the Assistant Registrar of Trade Marks, Madras, under Sections 46 and 56 of the Act for the rectification of the register of tr
