# VISHNUDAS TRADING AS VJDHNUDAS KISHENDAS v. THE VAZIR SULTAN TOBACCO CO. LTD., HYDERABAD AND ANR

- **Citation:** [1996] Supp. 3 S.C.R. 329
- **Court:** Supreme Court of India
- **Decided:** 1996-07-09
- **Case number:** Civil Appeal Nos. 9094-95 of 1996
- **Bench:** G.N. Ray, G.B. Pattanaik
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/vishnudas-trading-as-vjdhnudas-kishendas-v-the-vazir-sultan-tobacco-co-ltd-14662
- **Pages:** 31

## Headnote

Trade & Merchandise Marks Act, 195&-Sections 46 & 56-Application
B
for rectification on ground of non-use1-Respondent manufactwing only
cigarettes under a trade mark registered in respect of "manufactured tobacC
co
11_Appellant ntanufactzuing
11quiwan1" and
1Zarda
11 under the sa111e trade
mmk-Application for rectification of respondent's trade mark by appellant-Whether can be allowed.
Trade & Merchandise Marks Act, 195&-Section J2_!'Goods or D
description of goods"-Significance of
Trade Marks Rules, 1959-4th Schedule-Class-Meaning of
The respondent No. 1 was manufacturer of cigarettes under the
brand name "Charminar". It had obtained registration of its Trade Mark E
under the Trade Marks Act, 1940 in respect of "mannfactured tobacco"
falling in Class 34 of the 4th Schedule to the Rules framed under the Trade
Marks Act, 1940. However, the respondent No. 1 never manufactured
anything other than cigarettes.
The appellant manufactured "Quiwam" and Zarda" since 1973 and F
had been using the trade mark "Charminar" for its products. The appellant
applied for registration of the trade mark" Charminar" under the
provisions of Trade and Merchandise Marks Act 1958 on which tlte
respondent No. 1 raised objections contending that it would conflict with
its registered trade mark. The Joint Registrar of Trade Marks held that G
the heading "manufactured tobacco" would include in its ambit "Zarda"
and Quiwam" and therefore, the objection of respondent No. 1 cannot be
waived.
The appellant, thereafter, filed two applications under Section 46
read with Section 56 of the Trade Mark Merchandise Marks Act, 1958 for H
329
3'.\0
SUPREME COURT REPORTS f199Gj SUPP. 3 S.C.R.
"'
rt~rtiliration of rrgistt'red trade 111.ark of respondent No. 1 on the ground
tJ1at the respondent No.1 never 1nanufactured an31hing other than cigaretlrs and the said n1ark \\'as never used in respect of
11Zarda
11 or
1'Quh\-'an1".
The applications for rectification filed by the appellant were allowed by the
.-\s~·dstant Re~istrar, 'frade !\larks and the registration of the trade 1nark
B
c
in faYour of rcs1utndent No. 1 \Vas restricted to cigarettes.
Ou appeal to the High Court by the respondent No. l the Single
Judge, settiilg aside the order of the Assistant Regist.rar, Trade l\'larks
observed that the Assistant Registrar had 1nade a sub- classification of
"manufartured tobacc1{ occurring in class 34 \Vhich "'as not pern1issible.
It was further held that for registration of an article under Class 34, it was
not necessary to establish user of the trade 1nark.
On appeal, the Division Bench of the High Court confirmed the
order of the Single Judge holding that :
D
(a) there could be no separate registration in respect of cigarettes
as class 34 spoke only of "n1anufactured tobacco".
(b) the Joint Registrar had already declined registration of the trade
mark as sought by the appellant and therefore, the registration in favour
of respondent No. 1 was conclusive and the applications for rectification
E not n1aintainable;
F
(cl respondent No. l's trade mark could not be removed or restricted
on the ground of non.user with reference to goods of different specifica·
tions such as "Quhvam" and Zarda
11
Allowing the appeals, this Court
HELD : l. The rectification of the registration of the trade mark held
by respondent No. I, by limiting or confining the registration of trade mark
of the respondent no. 1 Company to particular goods, namely, cigarettes,
G in the facts and circumstances of the case, cannot be held as illegal or
unjustified. [358-H]
2.1. Registration of a trade mark cannot be held to be absolute,
perpetual and invariable under all circumstances. Section 12 of the Trade
and Merchandise Marks Act, I 958 prohibits registration of identical or
H deceptively similar trade 111arks in respect of goods and description of
VISHNUDAS'll~D. A"JVIDHNUDAS KJSHENDAS 1·. VAZlRSULTAN1DBACCOCO. LID.
331
goods which is identical or deceptively similar to the trade n1ark already A
registered.

## Text

_Characters 0–39,821 of 77,096. This is a partial read: ask again with offset=39821 for what follows._

r
VISHNUDAS TRADING AS VJDHNUDAS KISHENDAS
A
v.
THE VAZIR SULTAN TOBACCO CO. LTD.,
HYDERABAD AND ANR.
JULY 9, 1996
[G.N. RAY AND G.B. PATTANAIK, JJ.]
Trade & Merchandise Marks Act, 195&-Sections 46 & 56-Application
B
for rectification on ground of non-use1-Respondent manufactwing only
cigarettes under a trade mark registered in respect of "manufactured tobacC
co
11_Appellant ntanufactzuing
11quiwan1" and
1Zarda
11 under the sa111e trade
mmk-Application for rectification of respondent's trade mark by appellant-Whether can be allowed.
Trade & Merchandise Marks Act, 195&-Section J2_!'Goods or D
description of goods"-Significance of
Trade Marks Rules, 1959-4th Schedule-Class-Meaning of
The respondent No. 1 was manufacturer of cigarettes under the
brand name "Charminar". It had obtained registration of its Trade Mark E
under the Trade Marks Act, 1940 in respect of "mannfactured tobacco"
falling in Class 34 of the 4th Schedule to the Rules framed under the Trade
Marks Act, 1940. However, the respondent No. 1 never manufactured
anything other than cigarettes.
The appellant manufactured "Quiwam" and Zarda" since 1973 and F
had been using the trade mark "Charminar" for its products. The appellant
applied for registration of the trade mark" Charminar" under the
provisions of Trade and Merchandise Marks Act 1958 on which tlte
respondent No. 1 raised objections contending that it would conflict with
its registered trade mark. The Joint Registrar of Trade Marks held that G
the heading "manufactured tobacco" would include in its ambit "Zarda"
and Quiwam" and therefore, the objection of respondent No. 1 cannot be
waived.
The appellant, thereafter, filed two applications under Section 46
read with Section 56 of the Trade Mark Merchandise Marks Act, 1958 for H
329
3'.\0
SUPREME COURT REPORTS f199Gj SUPP. 3 S.C.R.
"'
rt~rtiliration of rrgistt'red trade 111.ark of respondent No. 1 on the ground
tJ1at the respondent No.1 never 1nanufactured an31hing other than cigaretlrs and the said n1ark \\'as never used in respect of
11Zarda
11 or
1'Quh\-'an1".
The applications for rectification filed by the appellant were allowed by the
.-\s~·dstant Re~istrar, 'frade !\larks and the registration of the trade 1nark
B
c
in faYour of rcs1utndent No. 1 \Vas restricted to cigarettes.
Ou appeal to the High Court by the respondent No. l the Single
Judge, settiilg aside the order of the Assistant Regist.rar, Trade l\'larks
observed that the Assistant Registrar had 1nade a sub- classification of
"manufartured tobacc1{ occurring in class 34 \Vhich "'as not pern1issible.
It was further held that for registration of an article under Class 34, it was
not necessary to establish user of the trade 1nark.
On appeal, the Division Bench of the High Court confirmed the
order of the Single Judge holding that :
D
(a) there could be no separate registration in respect of cigarettes
as class 34 spoke only of "n1anufactured tobacco".
(b) the Joint Registrar had already declined registration of the trade
mark as sought by the appellant and therefore, the registration in favour
of respondent No. 1 was conclusive and the applications for rectification
E not n1aintainable;
F
(cl respondent No. l's trade mark could not be removed or restricted
on the ground of non.user with reference to goods of different specifica·
tions such as "Quhvam" and Zarda
11
Allowing the appeals, this Court
HELD : l. The rectification of the registration of the trade mark held
by respondent No. I, by limiting or confining the registration of trade mark
of the respondent no. 1 Company to particular goods, namely, cigarettes,
G in the facts and circumstances of the case, cannot be held as illegal or
unjustified. [358-H]
2.1. Registration of a trade mark cannot be held to be absolute,
perpetual and invariable under all circumstances. Section 12 of the Trade
and Merchandise Marks Act, I 958 prohibits registration of identical or
H deceptively similar trade 111arks in respect of goods and description of
VISHNUDAS'll~D. A"JVIDHNUDAS KJSHENDAS 1·. VAZlRSULTAN1DBACCOCO. LID.
331
goods which is identical or deceptively similar to the trade n1ark already A
registered. The expression "goods" and
11description of goods
1
' appearing in
Section 12(1) of Trade and Merchandise Marks Act, 1958 indicak that
registration n1ay be niade in respect of one or more goods or of all go,Jtls
confor1ning to a general dtscription. The Trade and l\.1crchandb:e i\'1arks
Act, 1958 has noted distinction bef\'t'een description of goods forn1ing a
genus and separate and distinctly identifiable goods under the genus in
various otht!r Section8 e.g. goods of san1e description in Section 46 of the
Trade and Merchandise Marks Act, 1958, Rules 12 and 34 of' the Trade
Marks Rules, 1959 and class of goods in Section 18 of the Trade and
Merchandise Marks Act, 1958, Rules 12 and 26 read with 4th Schedule to
the Trade Marks Rules 1959. The "class" mentioned in the 4th Schedule
to the Trade !\·larks Rules 1959 n1ay subsulnt! or comprist! a nun1ber of
goods or articles which are separately identiliable and vendible and \Vhich
are not goods of the same desc.:ription as commonly understood in trade
or in common parlance. (357-G-H, 358-A-D]
2.2. I'vlanufactured tobacco is a c.:lass mentioned in Class 34 of 4th
Schedule of' the Trade Marks Rules, 1959 but within the said class, there
are nurnber of distinctly iclentiliable goods \Vhich are 1narketed separately
and also used differently. It is not only permissible but it will be only just
B
c
D
and proper to registt!r one or more articles under a class or genus if in
reality registration only in respect of such articles are intended by s11ecili· E
cally mentioning the names of' such articles and by indicating the class
under which such article or articles are to be comprised. (358-D-E]
3. If a trader or manufacturer actually trades in or 1nanufactures
only one nr so1ne of the articles coming under a broad classification and F
such tradtr or manufacturer bas no bona fide intention to trade in or
manufacture other goods or articles \\'hich also fall under the said IJroad
classification, such trader or manufacturer should not be permitted to
enjoy n1ono11oly in respect of all the articles which 1nay conie under such
broad classification and by that process preclude the other traders or G
manufacturers to get registration of separate and distinct goods which
may also he grouped under the broad classification. If registration has
hee!J. given generally in respect of all the articles coming under the broad
classification and if it is established that the trader or manufacturer \Vho
g'Jt such registration had not intended to use any other article except the
articles being used by such trader or manufacturer. the registration of f-I
332
SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.
A such trader is liable to be rectified by limiting the ambit of registration
and confining such registration to the specific article or articles which
really concern the trader or manufacturer enjoying the registration made
in his favour. (357-C-E]
B
4. There is no doubt that cigarettes and "quiwam" and "zarda" are
differently used and they have their distinctive quality and separate identity. These articles are also marketed as distinct articles of use in different
manner. In the common trade channel such articles are not only held
different and distinct articles but are marketed separately.
C
Edwards v. Dennis, [1885] 30 Ch. Div. 454; National Bell Co. v. Metal
Goods Co., (1971] 1 SCR 70; American Home Products Co1poration v. Mac
Laborato1ies Pvt. Ltd., (1985] Supp 3 SCR 264; Lever Brothen· Pmt Sunlight
Ltd. v. Swmiwite Products Ltd. LSVI RPC 84; Com Products Refining Co. v.
Sltargiila Food Products Ltd. AIR (1960) SC 142; Some1ville v. Sehemb1i,
(1887) 2 AC 453; Rustom v. Bata Shoe Company, AIR (1957) Cal. 120;
D Sunder v. Caltex, AIR (1969) Bombay 24 and Nestle Products v. Milkmaid
Co1poratio11, AIR (1974) Delhi 40, cited.
E
CIVIL APPELLATE JURISDICTION: Civil Appeal Nos. 9094-95
of 1996.
From the Judgment and Order dated 11.10.90 of the Madras High
Court in Trade Mark Second Appeal Nos. 1 and 2 of 1981.
M.S. Ganesh, N. Durga and T.V.S.N. Chari, for the Appellant.
F
C.S. Vaidyanathan, Shivaram, O.P. Gaggar, S.R. Setia for the
Respondent.
A.N. Jayaram, Additional Solicitor General, Ms. Indira Sawhney and
D.S. Mehra, for the Respondent No. 2.
G
The Judgment of the Court was delivered by
G.N. RAY, J. Leave granted. Heard learned counsel for the parties.
These appeals are directed against the common judgment dated
October 11, 1990 passed by the Division Bench of Madras High Court. in
H Trade Mark Second Appeal Nos. 1 and 2 of 1981 arising out of the
VISHNUDASTRD.ASVJDHNUDAS KISH END AS v. V AZIR SULTAN TOBACCO CO. LTD. !G.N. RAY. J.] 333
judgment dated September 11, 1980 passed by a Single Bench of Madras A
High Court in AAO Nos. 582-83 of 1978. The respondent No. 1 Company,
namely, the Yazir Sultan Tobacco Co. Ltd., Hyderabad, has been manufacturing cigarettes under the brand name "Charminar". The said Company in
1942 and in 1955, under the then Trade Mark legislation obtained registration of Trade Mark in respect of n1nanufactured tobacco
11 falling in Class B
34 of the 4th Schedule to the rules framed under the Trade Marks Act
1940 and 1950 Act. The respondent No. 1 Company, however, did not
manufacture anything other than cigarettes during all these long years. The
appellant, namely, Vishnu Das Trading as Vishnudas Kishendas Zarda are
manufacturing· quiwam and 'zarda' since 1973 and the appellant has been
using the same trade mark, namely, "Charminar" on his bottles and boxes
C
of quiwam and zarda. The device of trade mark "charminar" in the city of
Hyderabad as used by the appellant is, however, different from the device
being used by the respondent No. 1 Company. The appellant applied for
registration of quiwam and zarda with trade mark "Charminar" under the
Trade and Merchandise Marks Act 1958 and the Trade Marks Rules, 1959 D
framed under the said Act. The respondent Company raised objections
that the trade mark sought by the appellant would conflict with the
registered Trade Marks Nos. 9951 and 170427 which the respondent No. 1
Company obtained in 1942 and 1955. The Joint Registrar of Trade Marks,
however, observed inter alia in the minutes dated September 24, 1973 about
the objections of the respondent to the effect that the mark would conflic, E
with registered trade marks Nos. 9951 and 170427. It was also observed
that although the applicant had contended that such registration of trade
marks was in respect of cigarettes but quiwam and zarda were goods of
different specifications and such goods would not cause any conflict with
the goods being manufactured by the respondent No. 1 Company, since the p
registration was of the trade mark made in favour of the respondent in
respect of 'manufactured tobacco' which in its ambit would also take
quiwam and zarda, the objection of the respondent No.1 Company under
Section 12(1) of the Trade Marks Acts, therefore, could not be waived. It
was noted in the minute that the counsel for the applicant i.e. the appellant
herein, had offered to apply for rectification of the said trade mark in G
favour of the respondent No. 1 Company.
Accordingly, on October· 15, 1973, the appellant filed two applications under Section 46 read with Section 56 of the Trade and Merchandise
Marks Act, 1958 before the Registrar of Trade Marks, Madras for rectifyH
334
SUPREME COURT REPORTS 11996] SUPP. 3 S.C.R.
A ing the registration of the existing trade mark held by the rcspomlcnt No.
l Company mainly on the ground of non user of the same in respect of
quiwam and zarda by the respondent No. 1 Company. The proceedings
before the Registrar of Trade Marks continued from 1973-7(, but the
respondent No. 1 Company though contested the said applications could
B not dispute or refute the allegation of the appellant that the respondent
No. 1 Company had never manufactured any other article of tobacco
except the cigarettes. The said applications made by the appellant were
ultimately disposed of by the Assistant Registrar, Trade Marks, Madras on
August 31, 1976 by allowing the applications for rectification. The Assistant
Registrar Trade Marks ordered that the Registrar, Trade Mark, bcari11g
C Nos. 9951 and 170427 would be rectified by making the entries relating to
specification of goo<ls to read as
1cigarcttes'.
Respondent No. 1 Company thereafter preferred two statutory appeals u~dcr Section 109(2) of the Trade and Merchandise Marks Act
D before a learned Single Bench of Madras High Court. By a common
judgment dated September 11., 1980, the learned Single Judge allowed the
said appeals preferred by the respondent No. l and set aside the order of
the Assistant Registrar, Trade Marks, dated August 31, 1976. The learned
Single Judge, in his order allowing the said appeals, had observed that the
Acsistant Registrar of Trade Marks had made a sub-classification of
E 'manufactured tobacco' occurring in Class 34 although sub- classification
could not be made. It was also held by the learned Single Bench of the
Madras High Court that to sustain registration for an article 'manufactured
tobacco' in Class 34, it was not necessary to establish user of the trade mark
and rectification as ordered by the Assistant Registrar would enable the
F appellant to pass them as the goods manufactured by the respondent No.
1 Company.
Against the judgment and order passed by the learned Single Bench,
the appellant preferred two statutory appeals under Section 109(5) of the
G said Trade and Merchandise Marks Act, 1958 (hereinafter referred to as
Trade Marks Act) before a Division Bench of the Madras High Court and
by the impugned common judgment dated October 11, 1990, the Di,;sion
Bench dismissed the said appeals thereby affirming the order passed by
the learned Single Bench of Madras High Court. It was, inter a/ia, held by
the Division Bench of the Madras High Court that there cou1d be no
H separate registration in respect of cigarettes as Class 34 spoke only of
V\SHNUDASTRD.ASVJDHNVDAS KISHENDAS , .. VAZIRSVLTAN TOBACCO CO. LTD. [G.;-;. RAY.J.J 335
11manufactured tobacco" and that ground alone \Vas sufficient for setting A
aside the order of the Assistant Registrar. The Division Bench fnrther held
that the Joint Registrar had already passed an order under Section 12 of
the Trade Marks Act, 1958 declining registration of trade marks as sought
by the appellant and in the absence of rectification of the trade marks in
the register in favour of the Respondent No. 1 Company, the said registration was conclusive of the matter and the rectification applications were
not maintainable. The Division Bench also held that manufacture of
. cigarettes \Vould come under cmanufactured tobacco'. Hence, the respondent No. l Company's trade mark could not be removed or restricted on
the ground of non-use with reference to goods of different specifications
such as quiwam and zarda falling under the class 'manufactured tobacco'
even if quiwam and zarda had never been manufactured or were intended
to be manufactured by the respondent No. 1 Company. As aforesaid, the
said decision of the Division Bench of Madras High Court is under
challenge in these appeals:
Mr. M.R. Ganesh, the learned counsel appearing for the appellant,
has submitted that the avowed object of the Trade Marks Act, as stated in
the Statement of Objects and Reasons is "to enlarge the field of
registerability". Mr. Ganesh has submitted that the legislative intent and
object of the provisions in the Trade Marks Act relating to rectification
proceedings under Section 46 which deals with removal from register and
imposition of limitations on ground of non-use read with Section 56 which
deals with the power to cancel or vary registration and to rectify the
register are :
(a) to maintain the purity and precision of the Trade Marks
Register
(b) to secure advantage to the public
(c)
to establish bonafides in the registration of Trade Marks
(d) to obviate creation of monopolistic
through Trade Marks
or oligopolistic trends
Mr. Ganesh has further submitted that the present case relates solely
to rectification proceedings and the controversy in the present case does
B
c
D
E
F
G
not arise out of or relate to any question of infringement of trade mark or H
336
SUPREME COURT REPORTS [1996] SCPP. 3 S.C.R.
A passing off, defensive registration or any other kind or proceedings contemplated and provided for by the Trade Marks Act and considc•ations
relevant to such proceedings are not germane to the subject matter concerning the proceedings out of which the appeals arise. Mr. Ganesh has
further submitted that the quinteS>.ential admitted and concurrently found
B on facts and records are :
c
D
E
F
G
H
(i) the respondent Company is and always has been solely manufacturing cigarettes under the brand name of 'charminar' ever since
1942 and 1955. The said Company obtained registration of Trade
Marks for manufacturing tobacco in relation to the cigarettes
bearing the said brand name falling under Class 34 of the 4th
Schedule of the Trade Mark Rules framed u'ldcr the Trade Marks
Act 1940. The Schedule in Trade Marks Rules 1942 continues
verbatim as the 4th Schedule of Trade Marks Rules framed under
the Trade Marks Act. The Trade Mark 'charminar' is not defensive
registration. The word 'charminar' is not an invented word which
is the condition precedent for a defensive registration under Section 38 of the 1940 Act corresponding to Section 4B of the
subsequent Trade Marks Act.
(ii) the respondent Company never intended to nor evinced any
intention to nor even intends to manufacture anything other than
cigarettes.
(iii) Class 34 reads thus
1134 tobacco raw or manufactured, smokers articles, matches.
11
11manufactured tobacco" covers a large range and variety of
goods and articles which in terms of their different descriptions as
well as different modes of consumption, may be broadly
categorised as :
(a) tobacco consumed by smoking, cigarettes, cigars cheroot,
bidis, pipe tobacco.
(b) tobacco consumed by chewing and ingestion quiwam
which is the paste form and applied as an ingredient to pan,
zarda which is in the form of fine flakes (usually aromatic)
also applied to pan as another ingredient; gutka - it is agai!l
VISHNUDASTRD.ASV!DHNVDASKISHENDASv. VAZJRSULTANTOBACCOCO. LTD. [G.N. RA Y,J.] 337
in fine flakes which is chewed sometimes with the addition A
of lime (chuna).
( c) tobacco consumed by inhalation - snuff which
is m
powder form and taken in or inhaled through the nose.
(iv) the word 'charminar' is distinct and specific in connotation. It is the name of a well known 18th century monument
standing as a landmark in the city of Hyderabad. Its name
and depiction in any form was not susceptible to any
proprietary on pre-emptive claim by any one.
(v) Since 1973 the appellant has been manufacturing quiwam
and zarda in respect of which the appellant sought trade
marks under the brand name and device of 'charminar' on
B
c
the bottle and boxes of the product of the appellant with an
entirely different depiction as compared lo that used by the
respondent Company on its cigarette packets and cartoons. D
The appellant also holds a duly registered copyright under
the Copyright Act. 1957 on the brand name and device of
'charminar' as depicted by the appellant.
(vi) When the appellant had applied for registration of the E
said trade mark under Class 34 in respect of quiwam and
zarda, the trade mark Registry declined to grant the same on
account of the respondent Company's said registered trade
mark in relation to the cigarettes for which the appellant was
constrained to get the register rectified in relation to the
respondent Company's trade.mark. Hence, the proceedings F
under Section 46 read with Section 56 of the Trade Marks
Act had to be initiated· by the appellant.
Mr. Ganesh has contended that Manufactured tobacco" is a genus of
which those consumed variously i.e. by chewing, inhaling or by smoking are G
species. Each of these species constitutes articles of different description
from the others and each is distinct in character and use, though all of them
fall within the same broad class i.e.
11manufactured tobacco".
Mr: Ganesh has contended that no trade mark is or can be granted
in respect of a class of goods which is nebulous and lacks in any specificity H
338
SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.
A and precise identification-such as "manufactured tobacco". without any
reference lo the particular goods or articles or thing falling in the claJS
which is traded in or manufactured and in respect of which the applicant
trader or manufacturer seeks a trade mark. Hence, the registration of
Trade Mark in favour of Respondent No. 1 in 1942 and 1955 as "manufacB tured tobacco" was fundamentally erroneous and consequential erroneous
entry in the Trade Mark Register is liable to be appropriately rectified. By
such rectification, limiting the respondent Company's trade marks to
cigarettes, no prejudice will be caused to the respondent Company,
whereas if such rectification is not carried out, the appellant is irreparably
prejudiced and is precluded for all time from getting the trade marks for
C his goods, quiwam and zarda registered. Sush prejudice is equally occasioned to the rest of the trading and manufacturing community in relation to any species of "manufactured tobacco
11 other than cigarettes. Mr.
Ganesh has subn1itted that such prejudice, pre-en1ption and exclusion in
rem can not be permitted by a trade 1nark registration.
D
Mr. Ganesh has also submitted that on a true interpretation and
proper construction of Trade Marks Act and Trade Marks Rules 1959,
where (as in this case) a trader or manufacturer actually trades in or
manufactures solely one article namely cigarettes and evinces no bonafide
intention \Vhatever to trade in or manufacture any other goods or articles
E
belonging to the genus
11manufactured tobacco'
1
, such trader or n1anufacturer cannot by obtaining a trade mark for its product in respect of the
Class in which it falls (in this case "manufactured tobacco") preclude the
public at large or in any event, the trading and manufacturing community
e.g. traders and manufacturers of quiwam and zarda or traders and
F
manufacturers of snuff etc. from obtaining any mark in respect of their
products ~imply because they fall under a broad class or a genus i.e.
11manufactured tobacco" although the goods belong to different species and
are essentially different in description as also in the rnode of consun1ption.
Mr. Ganesh has further submitted Lhal exclusion of different species
G \vhich may come under the heading of a genus comprising various specifics
even \Vhen a trader or n1anufacturer having obtained registration under the
heading of genus, in fact, is manufacturing only one of the species thereby
pre-empting or excluding others Lo get registration in respect of different
species other than the species which is being manufactured by the trader
H or manufacturer, will be unjust and unfair and against the principles by
V1SH:-..'UDAS1RD.AS VIDH'<UDAS KISHENDASv. VAZ\RSlJLTA'ITOR<\CCOCO. l TD. [G.N. RAY. .l.] 339
which registration of trade mark is made. This proposition whould he
particularly valid where (a) the registration of the registered trade mark is
not a defensive registration and the brand name of the goods under
registration is not an
11invented \Vord
11 and the device) logo or syrnbol
associated with that name and depicting the product is not an invented one
and (b) even though the registered trade mark holder obtained the registration for the entire class in which his product falls, but he has neither any
bonafide intention to use nor has made any bonajide use or the registered
trade mark in relation to any other goods falling within that class, whether
within the stipulated statutory periods or beyond them, governing rectification of the Register and imposition of limitations on the ground of non-use
concerning registered trade marks.
A
B
c
Mr. Ganesh has further submitted that a contrary approach to the
interpretation and construction of the Trade Marks Act and the rules
framed thereunder will go against the very object and spirit or and print:iples underlying the trade 1nark Lnv. Accorc.ling to Mr. Ciancsh, the D
aforesaid propositions and the principles they adumbrate apply a fortiori
to a case such as the present one. Mr. Ganesh has contcndec.l that a
registered trade mark holder cannot, in la\V, claim exclusive 1nonopoly
rights over its trade mark as extenc.ling to goods of all descriptions falling
within the same class in which its sole and solitary product falls. The
registration in favour of the respondent Company cannot be held to
E
interpose or sustain objection to the rectification of its registered trade
mark or imposition of limitations thereon with reference to the goods or
articles of entirely different description, character and mode of consumption iQ. relation to \Vhich it had, at the time of obtaining the registration, no
bonafide intention to use its trade mark and which goods and artic1csi it
F
has never n1anufactured or intends to manufacture in fact. Mr. Ganesh has
contended that the registration of trade mark can appertain only to specific
goods and not to a generic class. Referring to Sections 46 and 56 of the
Trade Marks Act, Mr. Ganesh has submitted that the statute contains the
following postulates:
G
(i) The existing trade mark was registered without any bonafide
intention on the part of the applicant that it should be used in relation lo
those goods by him and there has in fact been no bonafide use of the trade
mark in relation to those goods by him upto a date one n1onth before the
date of the application under Section 46 by the person aggrieved. Mr. H
340
SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.
A Ganesh has submitted that this requirement is fully satisfied in the present
case.
(ii) Upto a date one month before the date of the application by the
person aggrieved, a continuous period of five years or longer had elapsed
during which the trade mark was registered and during which there was no
B bonafide use thereof iri relation to those goods by the registered trade mark
holder. In such a case, the concerned Tribunal, (High Court or the
Registrar), may irnpose on the registration of the existing trade mark such
limitations as it thinks proper for securing that the· existing registration shall
cease lo extend to such use. Mr. Ganesh has submitted that his requirement
C is also fully satisfied and the Assistant Registrar of trade marks has
specifically ordered so.
In this connection, Mr. Ganesh has submitted that the statutory
burden lies on the registered trade mark holder to show that his said
D
non-use was due to special circumstances in the trade and not to any
intention to abandon or not to use the trade mark in relation to the goods
to which the application of the aggrieved person relates. It has been
contended by Mr. Ganesh that the respondent Company has not pleaded
that under any special circumstance the Company did not use other items
of the goods falling under the class in which the respondent Company got
E registration. The respondent Company has not discharged the burden
arising from non-use of different items coming under the broad classification 'manufactured tobacco'. Mr. Ganesh has also submitted that if either
of the aboye mentioned ingredients is satisfied, then allowing of an application by the person aggrieved for the rectification will be matter of course
F
and refusal of such application for any valid reason will be an exception.
G
Mr. Ganesh has submitted that when the concerned authorities satisfy that
rectification of the registered trade mark is warranted in the facts and
circumstances of the case, such authority may make such order for making,
expunging or varying entries in the register as it may think fit for one or
more of the following reasons:
(a) the entry made in the Register without sufficient cause
(b) the absence or omission from the Register of any entry
H
(c) any error or defect in an entry in the Register
VlSHNUDASTRD. ASVIDHNUDA'i KISHENDAS v. V AZIR SULTAN TOBACCO CO. L'fo. [G.N. RAY. J.) 341
It has also been contended by Mr. Ganesh that it is consistent with
the scheme and provisions of the Trade Marks Act and the rules framed
thereunder that no registration of trade mark is absolute, perpetual and
invariable. Thus, under Section 12 which deals with prohibition of registration of identical or deceptively similar trade marks, in case of honest
concurrent use or of other special circumstances which in the opinion of
the Registrar make it proper so to do, he may permit the registration by
more than one proprietor of trade marks which are identical or nearly
resemble each other whether or not any such trade mark is already
registered in respect of the same goods or description of goods subject to
such conditions and limitations as the Registrar may think fit to impose.
Mr. Ganesh has submitted that this statutory scheme pervades other
provisions of the Act as well including in particular those that relate to the
institution of applications/proceedings for any purposes governed by the
Act. In this connection, Mr. Ganesh has drawn attention of the Court to
Sections 16, 17, 18, 21, 46, 47, 56, 69 and 112 of the Trade Marks Act.
Mr. Ganesh has also submitted that intrinsic evidence in the Trade
Marks Act and the 1959 rules leads inexorably and ineluctably lo the
following conclusions :
(a) Trade mark means a mark used in relation to the goods for
the purpose of indicating or so as to indicate a connection in the
course of trade between the goods and some persons having the
right to use the mark. "Goods" means anything which is the subject
of trade or manufacture. A trade mark posits an integral connection between a specific article or thing forming the subject matter
of trade/manufacture and its attribute as that of a particular
trader/manufacturer. Obviously, anything which is the subject of
trade or manufacture, n1ust be an article or thing that is distinctly
con1plete, identifiable and vendible but not something nebulous
A
B
c
D
E
F
and lacking in specificity or precise lacking in specificity or precise
identification. In this connection, the attention of this Court is
drawn by Mr. Ganesh to the definition of "Goods" and the definiG
tion of "Trade Mark" in Sections 2(1)(g) and (v).
(b) the focus of trade marks and registration thereof is on concrete,
specific, identifiable and vendible goods and not on a concept or
appellation of a class or a genus of goods. In this connection, the H
342
A
SUPREME COURT REPORTS fl996j SUPP. 3 S.C.R.
Court's attention was drawn by Mr. Ganesh to the dcfinitiom
relating to certification trade rr1ark,
1
' false trade descriplion
1
',
1'tra<le
marks" appearing in Section 2, sub-section (l) Clauses (c), (J), (g),
(i), (m), (u) & (v) and Section 2, sub-section (2) Clause (b).
B
Mr. Ganesh has contended that a trade mark can appertain only to
specific goods and not lo a generic class. No trade mark is or can be
granted in respect of a class of goods, such as
1'n1anufacture<l tobacco"
without any reference to particular goods or articles or thing falling in that
class which is traded in or manufactured and in respect of which the
applicant trader or manufacturer seeks the trade mark. Mr. Ganesh has
C contended that the classification goods and names of the classes as sci out
in the fourth Schcdole to the 1959 Rules framed under the Trade Marks
Act under Section 133 read with Section 22 of the General Clause Act,
1897 is purely for the purposes of enabling the Trade Marks Registry lo
ascertain in \Vhich class, specified goods or a particular article or thing falls
D before granting and registering any trade mark in respect thereof.
Mr. Ganesh has further submitted that Section 112 of the Trade
Marks Act gives express recognition and weight lo the practice of the
Trade Marks Registry. According to Mr. Ganesh, appreciable significance
and interpretative value are attached lo the index maintained and used hy
E time honoured practice by the Trade Marks Registry. The index is an
amplification in alphabetical order of the classification of goods, names of
the classes set out in the fourth schedule of the 1959 Rules framed under
the Trade Marks Act. The said Index is based on and derived from "The
International Classification Goods and :Services to which Trade marks Act
F Applied," published by the World Intellectual Property Organisation
(W!PO) which was established by Coll'.ention at Stockholm on July 14,
1967. Mr. Ganesh has stated that India is a member country of that
()rganisation and a signatory to that convention. The amplification and
refinement of a statutory classification for practical utility and efficacy
based on an internationally accepted and time honoured classification and
G
practice 1 deserves to be given due \Veight especially \vhen such practice is
given express statutory recognition and sanctity even to the extent of
mandatorily constituting evidence in the proceeding.
Mr. Ganesh has also submitted that the Trade Marks Act maintains
H a clear distinction between goods of the same description (occurring in
-
-·
VISHNUDASTRD. AS V!DH!\VDAS l'JSHENDAS c·. VAZIR SULTA.1\'TOBACCO CO. LTD. IG.N. RAY, J.] 343
Section 46 with grammatical variations in Sections 12 and 34) and "class of A
goods" with its grammatical variations in Section 18 and Rules 22 and 26
read with the fourth Schedule to the 1959 Rules. A given class occuring in
the said Schedule may comprise a number of goods or articles or things
each of which is separately identical and vendible and all of which are nol
goods of the same description as contradistinguished from goods falling
within the same class. Manufactured tobacco is a class which covers widely
varying goods of different description, character and mode of consumption.
Mr. Ganesh has contended that Section 2 (J)(m) of the Trade Marks Act
defines 'permitted use' in relation to a registered trade 1nark to mean inter
B
alia 1.he use of a trade n1ark by a registered user thereof nin relation to
goods with which the user is connected in the course of trade". Similarly,
C
a n1ark i.e. a device, ~Jran<l, heading, label, ticket, nan1c, signature \Vord,
letter or nu1neral or any con1bination thereof can be placed or used upon
specific goods only and not upon something that is a concept or appellation, for example, 'n1anufacturcd tobacco'. !\.1r. Ganesh has submitted that
Section 2(2) (b) of the Trade Marks Act provides that in the Trade Marks D
Act any reference to the use of a mark in relation lo goods shall be
construed as a reference to use of the n1ark upon or in any physical or in
any other relation whatsoever to such goods.
Referring to Section 8 of the Trade Marks Act, Mr. Ganesh has
submitted that Section 8 contemplates that registration can only be in
respect of particular goods and that there is a distinction between
11goods
11
and "a prescribed class of goods" in which they may be comprised. It also
postulates that the attribution of particular goods to their proper class for
purposes of registration of trade mark is to be determined by the Registrar
whose decision in the matter shall be final. Mr. Ganesh has also submitted
that Section 9 of the Trade Marks Act deals with requisites for registration in the Trade Marks Register. Sub- section ( 4) highlights the point that
if it is not distinctive, a trade mark shall not be registered in Part B of the
Register unless such trade mark is capable of distinguishing goods with
which the proprietor of a trade mark is or may be connected in the course
E
F
of trade from goods in the case of which no such connection subsists, G
generally.
Mr. Ganesh has submitted that Section 12(3) of the Trade Marks Act
prov.ides that in case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, 1nake it proper so to do, H
344
SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.
A the Registrar of trade marks which are identical or nearly resemble each
other in respect of the same goods or description of goods subject to such
condillons and limitations, if any, as the Registrar may think fit to impose.
Section 45 (2) also provides that the High Court or the Registrar may
impose on the registration of an existing trade mark such limitations as
B the Tribunal thinks proper for securing that registration shall cease to
c"tcnd to use of the registered trade mark to the extent of its actual
non-use.
Mr. Ganesh has submitted that at the very stage of application for
registration of a trade mark, the Trade Marks Act recognises the distincC tion between specific goods and the class of goods in which they may fall.
Section 18(2) provides that an application for registration "shall not be
made in respect of goods comprised in more than one prescribed class of
goods." Similarly, Section 24 which deals with jointly owned trade marks
adverts to an article with which both or all of them are connected in the
D course of trade.
Mr. Ganesh has further submitted that e"trinsic aids to the interpretation and construction of the Trade Marks Act and the 1959 Rules
framed thereunder also serve to sustain the submissions made by him. The
extrinsic aid includes corresponding legislation in the United Kingdom, the
E legislative history of the Trade Marks Act of 1958 and 1959 Rules framed
thereunder, the Report of the Trade Marks Enquiry Committee, 1954, the
Report of Mr. Justice Rajagopala Ayyangar on Trade Marks Law Re\1sion
in 1955 and the Statement of Objects and Reasons for the Bill which
culminate in the Trade Marks Act. Mr. Ganesh has submitted that the
F decisions of Courts in India and also the authorities of persuasive value
from foreign jurisdiction support the contentions made by him. Mr. Ganesh
has submitted that the rationale of trade mark law with reference to the
rectification of the Registrar is aptly and succinctly articulated in a locus
classicus in Edwards v. Dennis, (1885) 30 Ch. Div. 454 at 474. Lord Justice
Cotton (Lindley and Fry, L.J.J. concurring) has observed to the following
G effect:
H
" .......... The registration in the present case has been for the entirety
of that class. In my opinion that is wrong. Even if a trade mark
can be registered which is not in actual use, it ought to be restricted
to those goods in connection with which it is going to be used. In
- . ;
VJS!-INUDASTRD.ASV!DHNUDA<; KISHENDAS,·. VAZIRSULTA1'\l 1DBACCOCO. LTD.fG.N. RAY.l] 345
1ny opinion, it is not the intention of the Act that a n1an registering A
a trade mark for the entire class and yet only using it for one article
in that ch'5, can claim for himself the exclusive right to use it for
every article in the class ....... Can a man claim registration for all
the articles specified in the class when the business he is engaged
in, comprises only one specific portion of the articles named in the
class? I am of the opinion he cannot ....... Consequently, I am of B
the opinion that the Register ought to be rectified ......... .
11
••••••••••••••••• In n1y opinion, if a man wishes to extend his business
to a new description of goods and to use his trade mark in
connection with the goods, he ought to register it in respect of C
those goods. All we have now to do is to construe this Act of
Parliament; and it appears to me that it would be a wrong interpretation of the Act, to hold that, when registration is general for
an entire class, it can be maintained for that class by a man who
is assignee of a business in only one particular description of goods D
in that class".
Mr.