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2018 Supreme(Mad) 1553
IN THE HIGH COURT OF JUDICATURE AT MADRAS
R. Subbiah, P.D. Audikesavalu, JJ.
M/s. N. Ranga Rao & Sons – Petitioner
Vs.
M/s. Shree Balaji Associates, Bangalore and Ors. – Respondents
W.P.No.12531 of 2013 and M.P.No.1 of 2013
Decided On : 13-06-2018
For the Petitioner: Mr. Rajesh Ramanathan for M/s. Tmt. Law Practice
For the Respondent: Mr. T.K. Ramkumar for M/s. Ram and Rajan & Associates, M/s. T.V. Krishnamachari, SPCCG
The main legal point established in the judgment is that a trademark must be proven to be well-known to be entitled to protection, and defensive registration does not apply to generic or common words.
Headnote:
CYCLE BRAND - Trademark Dispute - Trade and Merchandise Marks Act 1958, Section 47 - Well-known trademark - No evidence to establish well-known mark - Defensive registration not applicable to common words - No monopoly over generic word - No bar to registration of respondent's mark in Class 21 - Petitioner's mark not well-known - Dismissal of writ petition
Fact of the Case:
The petitioner, a manufacturer of incense sticks and dhoop sticks, sought to quash the order allowing the appeal filed by the 1st respondent in a trademark dispute. The petitioner claimed that their trademark 'CYCLE BRAND' with the device of 'Cycle' was well-known and entitled to protection under Section 11(10)(i) of the Trade Marks Act. The 1st respondent had filed an application for registration of an identical trademark 'CYCLE GRASS BROOM' with the device of a Cycle for Grass Brooms in Class 21.
Finding of the Court:
The court found that the petitioner's mark was not a well-known trademark as claimed, and the defensive registration under Section 47 of the Trade and Merchandise Marks Act 1958 did not apply to common words. The court also held that the petitioner could not claim monopoly over the word 'Cycle' and that their registration in Class 21 did not prevent the registration of the 1st respondent's mark for brooms and cleaning supplies. The court dismissed the writ petition, finding no merit in the petitioner's claims.
Issues: The issues involved in the case included the well-known status of the petitioner's trademark, the applicability of defensive registration to common words, and the petitioner's claim of monopoly over the word 'Cycle' in Class 21.
Ratio Decidendi: The court held that the petitioner failed to establish their mark as a well-known trademark and could not claim monopoly over a common word. The court also found that the defensive registration did not apply to generic words and that the petitioner's registration in Class 21 did not bar the registration of the 1st respondent's mark for brooms and cleaning supplies.
Final Decision: The court dismissed the writ petition and closed the connected Miscellaneous Petition, with no costs awarded.
R. SUBBIAH, J.
This writ petition has been filed by the petitioner praying to quash the order dated 04.01.2013 passed by the 2nd respondent viz., Intellectual Property Appellate Board allowing the appeal filed by the 1st respondent herein in OA/19/2009/TM/CH, and thereby quashing the order passed by the 3rd respondent viz., the Deputy Registrar of Trademarks in MAS 25781 dated 26.06.2009.
2. The brief facts of the case of the petitioner, which are necessary for deciding the issue involved in this writ petition, are as follows:-
2-1. The petitioner-company is engaged in the business of manufacturing and marketing incense (agarbathi) sticks and dhoop sticks for more than half a century. The petitioner company is the pioneer in the said business and have reached the pinnacle in their industry built brick by brick by their forefathers. The petitioner's products are available all over India and abroad and as such, the petitioners have attained international reputation.
2-2. During the course of their said business, the petitioner- company has honestly conceived and adopted the trademark 'CYCLE BRAND' with the device of 'Cycle' as early as in the year 1954 and have been continuously using the said trademark without any interruption from any quarters. The petitioner-company is the world's leading manufacturers of agarbathies and dhoop sticks and they have been using the same, not only in the domestic market, but also across several countries worldwide. The trademark 'CYCLE BRAND' with the device of 'Cycle' has remained the hallmark of its business and is also the petitioner's house mark which is being used in every product and carton and thus, the said trademark has reached the pinnacle of reputation amongst the consumers. The trademark 'CYCLE BRAND' and the device of 'Cycle' has become so well known amidst the consumers which include literate, illiterate men, women, children and the said mark could well be claimed as one of the most recognizable trademark in India.
2-3. Further, the petitioner company has more than 100 trademarks in commerce and in almost all of the products, the above trademark 'CYCLE BRAND' with the device of the Cycle would appear on their labels and the said trademark is recognized worldwide. In order to safeguard their rights, the petitioner company has applied for and obtained registrations of the above trademark not only in Class 3 (for agarbathi and dhoop sticks), but, also in all other Classes. The petitioner-company has also applied for and obtained registration of their labels including the trademark 'CYCLE BRAND' with device of Cycle under the Copyright Act. Their device of Cycle has also been used and registered in various trademark cartons and a few of them are as follow_
S. No.
Trademark
class
Registration No.
1
Cycle Brand S.T. Agarbathi Box
03
274106
2
cycle brand S.t. Agarbathi Word
03
293414
3
Device of Cycle
03
191076
4.
Cycle Branch Three in One
03
426521
5
Cycle Mallika
03
415067
6.
Cycle Kesari
03
394312
They have also applied for and obtained registration of their trademark "Device of Cycle" in all the 34 classes that was available under the Trade and Merchandise Marks Act 1958 i.e., from 1 to 34 and all are still valid and subsisting. They have also applied and obtained registration of their labels including the trademark CYCLE BRAND with device of Cycle under the Copyright Act. The trademark 'CYCLE BRAND' with the device of Cycle has been used continuously and extensively ever since its inception in the year 1954 and has acquired a tremendous reputation and goodwill amongst the consumers in India and abroad. Due to such a long, continuous and extensive use of the trademark by the petitioner, substantial reputation and a valuable goodwill has accrued to the petitioner and the trademark has become one of the most sought after b
