JUDGMENT :- This is an appeal preferred by the applicant, V.R. Subramanyam, in Application for rectification No. MAS 9 before the Assistant Registrar of Trade Marks, Madras, by removing therefrom the trade mark No. 176062, registered in the names of the respondents consisting of the word "Roji". The application was dismissed by the Assistant Registrar of Trade Marks, Madras holding that the trade mark No. 176062 was not made without sufficient cause. This appeal is preferred against that order refusing rectification.

2. The business of the applicant was started by the father and predecessor-in-title of the applicant as V.S. Raju Mudaliar and Sons, in the last decade of the last century and was manufacturing and selling perfumery and allied preparations under the trade mark "Raja". The applicant, who established his concern Manyam and Co, in 1920 and acted for sometime as distributors for Raja products of Messrs. V. Raju Mudliar and Sons, later amalgamated and continued the manufacture and sale of his products under the name and style of Messrs Manyam and Co. The trade mark "Raja" in respect of toilets, cosmetics, etc. was lawfully used as an unregistered trademark for the last several decades and is being used as a registered trade mark for the past many years. The trade mark "Raja" was registered on 23-9-1943. The applicant stated that he had spent several lakhs of rupees in the advertisement of this trademark and that the popularity and reputation of the trade mark "Raja" is well established in Madras.

3. The respondent applied for the registration of the trade mark "Roji" on 3-9-1956. It was advertised in the journal on 1-12-1956 and subsequently the registration was ordered. On 24-10-1960, the present application was filed for rectification of the register by removal of the mark Roji" from the register. The ground alleged for rectification was that the name was registered in the books in violation of Sections 9, 11 and 12 of the Trade and Merchandise Marks Act 1958.

4. The respondent denied that the registration of the name "Roji is prohibited under Sections 9, 11 and 12 of the Act. He also contended that the mark that was registered was not identical with or deceptively similar to the trade mark registered in the name of the petitioner. He also contended that the petition for rectification of the register was belated and not bona fide and that the applicant had no locus standi to ask for the rectification of the register.

5. The Assistant Registrar of Trade Marks found that the applicant had locus standi to prefer the application. He also found that the goods for which the trade mark was registered were the same and were of the same description as that of the applicant. He found that there was no contravention of Ss. 9, 11, 11 (a) or 12 (1) of the Act, and that the mark was not liable to be removed from the register.

6. It is admitted that the applicant was trading with the registered name "Raja" and that that mark has earned a reputation in the market. It is also admitted that considerable sums of money had been spent by the applicant for advertisement of his trade mark "Raja". It is also not denied in this appeal that the applicant is entitled to maintain the application for rectification of the register.

7. Mr. V. Thiagarajan, learned counsel for the appellant, contended that the registry of the name "Roji" is contrary to the provisions of Sections 9 (1), 11(a) and 12 (1) of the Act and it is liable to be removed from the register. Section 9 (1) of the Act provides that a trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the essential particulars given in sub-sections (a) to (e). Sub-sec. (d) prohibits the use of a word which is a geographical name or a sur-name or personal name. A geographical name, a sur-name or a personal name cannot be registered except upon evidence of its distinctiveness. It is the contention of the learned counsel for the appellant that the

Click Here to Read the rest of this document