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Madras High Court
M. ANANTANARAYANAN,NATESAN
Andhra Perfumery Works joint family Concerns - Appellant
Versus
Karupakula Suryanarayaniah - Respondent
Decided On : 08/23/1967
TRADE MARK - Distinctiveness - Loss of distinctiveness - Common user - Acquiescence - Abandonment - Rectification of Register - Onus of proof.
Fact of the Case:
The respondent firm applied for registration of a Trade Mark consisting of the device of Lord 'Ganesh' and the legend 'Ganesh Durbar Bathi' in respect of Agarbathis. The appellant firm opposed the registration on the ground that the word 'Ganesh' had been in use for a number of years as a Trade Mark, amongst manufacturers of Agarbathies all over India and had become publici juris.
Finding of the Court:
The Court held that the respondent firm had established distinctiveness in respect of the mark prior to 1960, and that the infringements or piracies followed in its wake. The Court further held that the evidence adduced by the opponents was inadequate to show that distinctiveness was destroyed, and that the Mark had become publici juris.
Issues: 1. Whether the respondent firm had established distinctiveness in respect of the mark prior to 1960? 2. Whether the infringements or piracies followed in its wake? 3. Whether the evidence adduced by the opponents was adequate to show that distinctiveness was destroyed, and that the Mark had become publici juris?
Ratio Decidendi: 1. The Court held that the respondent firm had established distinctiveness in respect of the mark prior to 1960, based on the following factors: - The respondent firm had a very prosperous business, which vastly expanded from 1953 to 1960. - Their advertisements were considerable, and their goods found very wide markets and public support. - They attempted registration fairly early, but owing to complications in procedure a formal shape emerged only in May 1960. - In the meantime, a number of other dealers, obviously in the wake of their success, began to manufacture Agarbathis with the Trade Mark of 'Ganesh' or palpable variations of the same. - These infringements appear to have been on quite a small scale. 2. The Court held that the infringements or piracies followed in its wake, based on the following factors: - The respondent firm was aware of several piratical attempts, which might have been on quite a small scale. - They were putting some of them down by actions in Court, and they were accepting undertakings from others, on threatened action, to desist from further use of the Mark. 3. The Court held that the evidence adduced by the opponents was inadequate to show that distinctiveness was destroyed, and that the Mark had become publici juris, based on the following factors: - The affidavits of individuals in the list of the forty alleged traders, concurrently using the label, were unsatisfactory. - The orders from their clients, mainly postcards and letters, for their goods, accompanying those affidavits, were meagre. - The affidavits of two printers in respect of cartons and labels bearing these various Marks, namely, B. N. Jayaraj and N. R. Nanjundiah, along with a number of letters and post-cards to these printers from manufacturers of Agarbathis, for printing labels etc., did not prove that the cartons and labels were ever used, on any scale worth notice. - The affidavits of other users of Agarbathis were very unsatisfactory, and formed no basis for any clear inference of common user, or of the device being publici juris.
Final Decision: The appeals were dismissed with costs.
M. ANANTANARAYANAN, C.J. :- These related appeals involve certain problems of great interest and significance, in the application of the law of Trade Marks to the facts of the record. It is not so much that the problems involved are bare of authority; indeed, the contrary is true, and we have a plethora of decisions from which to select leading precedents, but that the issue, whether certain of those dicta now require modification or a certain refinement does appear to arise. We might state, at the out-set itself, that the authorities that we have examined fall into three main groups : (1) English precedents, many of these dating from the last decades of the 19th Century, (2) expositions, supported by authorities, of the relevant principles, appearing in the Treatises, Halsbury's Laws of England, Third Edition, Volume 38; Kerly on Trade Marks, 8th Edition (R. G. Lloyd), The law on the Trade and Merchandise Marks by Dr. Venkateswaran (1963 Edition) and (3) the enactment itself, and one or two decisions of the Supreme Court and of our High Court.
2. Before proceeding to the facts, it may be convenient to formulate certain of the relevant issues, in a broad mode. Before a Trade Mark attains the status of being placed in the Register, when does it become distinctive of the goods of its proprietor and user? What are the criteria to be applied, to test such distinctiveness, at a stage which is prior to placement in the Register? Assuming that such distinctiveness existed, can it be lost by successful piracy alone? Should such common user, whether surreptitious or open, be substantial or is it enough that a certain volume of it exists? Should there be knowledge of this user, on the part of the proprietor of the distinctive mark, and either acquiescence or abandonment, for the mark to sink into a common use? What are the tests of Publici juris? Upon whom lies the onus, in a contest, to prove the elements publici juris, as an objection to the registration?
3. At the outset we shall indicate, in broad outline the facts which led up to these appeals. At a subsequent stage, after examining the precedents and the authorities it will become incumbent on us to make a detailed analysis, of the categories of evidence upon which reliance is placed by the appellant firm, and the effect of this evidence on the issues of the fact involved.
4. In both the appeals, the Andhra Perfumery Works, a joint family concern represented by its Manager, is the appellant firm and will hereinafter be referred to as the appellants. There were two closely-related proceedings before Sadasivam, J., one of which was C. M. A. No. 203 of 1962. This was an appeal from the order of the Assistant Registrar of Trade Marks, directing the placement in the Register of a device of Lord 'Ganesh' and the Legend 'Ganesh Durbar Bathi' in respect of the Agarbathis produced by the National Flag Perumery Works (respondent) which, admittedly, fell within the category of Item 3 of the Fourth Schedule, of the Trade and Merchandise Mark Act, 1958. LPA NO. 106 of 1964 is the appeal from the judgment of the learned Judge (Sadasivam, J.) O. P. No. 202 of 1962 was a proceeding before the same learned Judge under Sections 56, 107 and 108 of the Act (Act XLIII of 1958) by the Andhra Perfumery Works (Appellants) praying for the rectification of Part A of the Register, by expunging therefrom this registered Trade Mark. The two proceedings involve identical issues of law and fact, and were very properly dealt with together.
5. The order of the Assistant Registrar of Trade Marks, from which the former appeal arose, is a detailed one, and it furnishes the entire history of the proceedings. We shall indicate the salient events here, and also refer, in a condensed form to the averments and the evidence in the related Original Petition for rectification. The respondent applied for registration of the Trade Mark on 24-5-1960. The relevant affidavits disclose the following facts. The respondent cla
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