1963 Supreme(Mad) 297

Madras High Court
SADASIVAM
Sona Ana Pana Baulraj - Appellant
Versus
S.P.Vadivelu Nadar and Sons - Respondent
Decided On : 09/13/1963

The registration of a trade mark is valid if it is not a geographical name in its ordinary signification, if it is distinctive of the goods of the proprietor, if it is not obtained by fraud, and if it does not offend against the provisions of Section 8 of the Trade Marks Act, 1940.

Headnote:

TRADE MARKS - RECTIFICATION OF REGISTER - GEOGRAPHICAL NAME - DISTINCTIVENESS - REGISTRATION OF TRADE MARK - VALIDITY - SECTION 24 OF THE TRADE MARKS ACT, 1940 - SECTION 6(1)(D) OF THE TRADE MARKS ACT, 1940 - SECTION 74(1) AND (2) OF THE TRADE MARKS ACT, 1940 - SECTION 46 OF THE TRADE MARKS ACT, 1940 - SECTION 136(4) OF THE TRADE AND MERCHANDISE MARKS ACT, 1958.

Fact of the Case:

Petitioner sought rectification of the register of Trade Marks by expunging the trade mark No. 133588 containing the trade name "Manthithoppu". The first respondent, a firm of partners, was carrying on business in the preparation and sale of a medicinal oil described as 'Manthithoppu Manikatti Swamigal Sarvaroga Sanjivi thailam'. The second respondent learnt the process of preparing the medicinal oil from Manikatti Swamigal of Inam Manthithoppu and got an exclusive right to manufacture and sell the said thailam within the district of Madurai by virtue of the agreement Ex. P.1 dated 27-01-1933 entered into with the said Swamigal. He got the label "Sarva Roga Sanjeevi thailam' marked as "A" in Ex P.2 registered under the document at Calcutta on 10-09-1934. He issued a notice of registration in respect of the same in the issue of the tamil paper "Jayabharathi" dated 18-11-1936 as evidenced by Ex. P.3 Subsequently he got the registered release deed Ex. P.4 dated 30-04-1939 from Manikatti Swamigal of Inam Manthithoppu extending his rights under Ex. P.1 to the entire limits of India He got the label found in Ex. R.7 with the several trade names registered before the Assistant Registrar of Trade Marks Calcutta, after the Trade Marks Act of 1940 came into force. Subsequently on 3-05-1948, he applied to the Registrar of Trade Marks at Bombay under the Trade Marks Act of 1940 for registration of the label contained in Ex. R.1 and it was actually registered on 2-03-1950. On the same date he got the three other trade marks Nos. 133584, 133585 and 153585 registered in respect of the names 'Manthitope Manikatti Swamigal' "Sarvaroga Sanjeevi Thailam" and "Manthitope" found in the main label registered separately. He issued the notification Ex. P.5 in the tamil daily newspaper "Thanthi" dated 09-06-1950 in respect of the said registrations. He renewed these registered trade marks on 30-03-1955 as evidenced by Ex. R. 6. The first petitioner as the Manager of the Joint family consisting of himself and his brothers is carrying on business in a medicinal oil as 'Manthithope N. Shanmugham Kaimuri Anuboga Sarvaroga Sanjivi thailam" at Usilampatti Madurai District since the year 1948. The second petitioner started a firm under the name and style of "Rajan Brothers" which was subsequently transformed into a partnership firm called G. A Rajan and Co. and the firm carried on business of manufacturing and selling the herbal oil under the name and style of "Manthithope Hanuman Sanjivi thailam".

Finding of the Court:

The court held that the trade name "Manthitope" registered by respondents 1 and 2 was distinctive of their goods at the time of registration. The court also held that the registration of the trade name "Manthitope" was valid and could not be rectified under Section 46 of the Trade Marks Act, 1940. The court further held that the petition was not maintainable as it was not filed within the limitation period prescribed under Section 24 of the Trade Marks Act, 1940.

Issues: 1. Whether the trade name "Manthitope" registered by respondents 1 and 2 was distinctive of their goods at the time of registration? 2. Whether the registration of the trade name "Manthitope" was valid? 3. Whether the petition was maintainable?

Ratio Decidendi: 1. The court held that the trade name "Manthitope" registered by respondents 1 and 2 was distinctive of their goods at the time of registration. The court relied on the evidence filed by the respondents, including letters from customers, to show that the medicinal oil prepared by them had come to be recognised as the "Manthitope thailam" of respondents 1 and 2 even prior to the date of application for registration. 2. The court held that the registration of the trade name "Manthitope" was valid. The court held that the trade name was not a geographical name in its ordinary signification and that it was distinctive of the goods of respondents 1 and 2. The court also held that the registration of the trade name was not obtained by fraud and that it did not offend against the provisions of Section 8 of the Trade Marks Act, 1940. 3. The court held that the petition was not maintainable. The court held that the petition was barred by limitation under Section 24 of the Trade Marks Act, 1940. The court also held that the petition was not saved under Section 136(4) of the Trade and Merchandise Marks Act, 1958.

Final Decision: The petition was dismissed with costs.