TaxTMI 
TaxTMI 
TaxTMI 
1955 (4) TMI 34
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.... and is a device consisting of the word "Shree" written on the top in bold Bengali character, having below it an ornamental figure with the word "Shree" written in the centre in small Deva Nagri character, the word "TRADE" written in English in an inclined manner on the left hand side of the ornamental figure and the word "MARK" written in English in an inclined manner on the right hand side of the ornamental figure and the words "Shree Durga Charan Rakhit" written at the bottom in Bengali characters. The ornamental figure referred to above consists of a triangle over which is another inverted triangle and in the centre the word "Shree', in small Deva Nagri character as mentioned above, the whole of the said ornamental figure being enclosed in a circle outside which are twelve ornamental petals. In the affidavit affirmed by Malli Nath Rakhit, a director of the respondent company and filed in these proceedings, this mark has throughout been referred to as "the said mark SREE". The said Durga Charan Rakhit having subsequently been adjudged insolvent all his properties including the goodwill of his ghee business and the said mark vested in the Official Assignee of Calcutta. On the 15t....
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..... It is also said that the ghee marketed by the respondent company and its predecessors is well known by the said mark and is always asked for under the name "Shree". The Indian Trade Marks Act, 1940 having been brought into force in 1942 the respondent company on the 21st August 1942 filed an application for the registration of its said mark under the Act. By his letter dated the 29th November 1943 the Registrar proposed that there should be a disclaimer of the word "shree" The respondent company by its agents' letter dated the 15th February 1944 intimated to the Registrar that, it could not agree to the proposal as "the trade mark Shree is very important in the device" and "the ghee is commonly designated by the trade mark Shree". The respondent company also submitted an affidavit affirmed by one Bidyut Bikash Rakshit, a director of the respondent company, in support of its objection. The Registrar not having then pressed his proposal for disclaimer the respondent company's said mark was duly registered as trade mark No. 3815. It appears that subsequently the Registrar found that the word "Shree" was used by Hindus as an auspicious symbol and placed even on letter heads and tha....
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....gistrar rectifying the register. Being of the opinion that the point involved was a novel one in this country and was of importance and would affect the-attitude of the Registrar in future cases, the High Court certified that it was a fit case for appeal to this Court under Article 133(1)(c) of the Constitution. Hence the present appeal by the Registrar. The order of rectification of the register by inserting a disclaimer was made by the Registrar under section 13 read with section 46(4) of the Trade Marks Act, 1940. Section 13 runs as follows: "13. Registration subject to disclaimer:-If a trade mark contains- (a)any part not separately registered as a trade mark in the name of the proprietor, or for the separate registration of which no application has been made, or (b)any matter common to the trade, or otherwise of a nondistinctive character, the tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such ma....
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....in In re Albert Baker Co.'s Application and In re Aerated Bread Company's Application (L.R. [1908] 2 Ch. 86; 25 R.P.C. 513) which is commonly called the A.B.C. case. In that case Eve, J. found on the evidence that Albert Baker Company were widely known as "A.B.C." or "A.B. & Co." but that the letters "A.B.C." did not exclusively indicate their goods and that those letters being common to the trade they were not entitled to the exclusive use of those letters. Nevertheless the learned Judge did not hold that that finding alone concluded the matter. Said the learned Judge: "The first observation which it occurs to me to make is that the object of the Legislature was to relieve traders from the necessity of disclaiming, and I think it follows from this that the condition is one for the imposition of which some good reason ought to be established rather than one which ought to be imposed, unless some good reason to the contrary is made out. This conclusion is, I think, fortified by the frame of the section, which is in an enabling form empowering the tribunal to impose the conditions power which, I conclude, the tribunal woul....
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....hould not be interfered -with by the High Court merely on the ground that, in the opinion of the High Court, it could have been exercised differently or even that the High Court would have exercised it differently, had the matter been brought before it in the first instance. The proper approach in such a case is for the High Court to consider, as said by Lord Dunedin in In the matter of an application by F. Reddaway & Co. Ltd.( 1926] 44 R.P.C. 27 at p. 36.), "whether the Registrar had really gone so wrong as to make it necessary to interfere with his discretion". The third thing to note is that the avowed purpose of the section is not to confer any direct benefit on the rival traders or the general public but to define the rights of the proprietor under the registration. The registration of a trade mark confers substantial advantages on its proprietor as will appear from the sections grouped together in Chapter IV under the beading "Effect of Registration". It is, however, a notorious fact that there is a tendency on the part of some proprietors to get the operation of their trade marks expanded beyond their legitimate bounds. An illustration of an attempt of this kind is to be fo....
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.... its prominent part, the word "Shree" which is not separately registered as a trade mark in the name of the respondent company and, indeed, no application had been made by it for the separate registration of that word. There can, therefore, be no doubt as to the existence of the jurisdictional fact referred to in clause (a) of that section. Further, the Registrar found as a fact, for reasons stated by him, that the word "Shree" was not adapted to distinguish, which means that it did not pass the test for registrability laid down in section 6 and in particular in sub-section (3) thereof. The High Court also unequivocally took the view that "Shree" is a word which had numerous meanings and that it would be impossible for any trader to contend that he had an exclusive right to the use of such a word. It, therefore, follows that the respondent company's trade mark was concurrently held to have contained matters of a non-distinctive character and consequently the second jurisdictional fact was also present in this case. It, nevertheless, appeared to the High Court that there was no ground whatsoever for the order made by the Registrar. The High Court read the decision of the Registrar a....
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....onclusion that the word 'Tudor' was a matter of distinctive character as it denoted the goods of the applicant's manufacture, the Court might have disposed of the case on the short ground that, on that finding, the applicant was entitled to the exclusive use of that name in connection with chocolates and like goods and, therefore, no question of requiring a disclaimer could, in that situation, arise at all. Treating the matter, however, as still one of discretion, the learned Judge had to take into account the commercial case made on behalf of the applicants, namely, that they would, by disclaiming any right to the exclusive use of the word 'Tudor', practically be inviting the public to disregard such common law rights as they had acquired to the use of the name 'Tudor' and held that to impose a disclaimer of that word, in spite of the finding as to its distinctiveness in relation to the goods of the applicants, would be to drive the applicants to take innumerable passing off actions. The facts of that case appears to us to be clearly distinguishable from those of the case now before us. Here the concurrent finding of the Registrar and the High Court is that the word "Shree" is no....
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....ected by disclaiming the word "Shree", said frankly that it was far easier to be successful in an infringement action than in a passing off action. This clearly indicated that the respondent company did not want any other merchant to use the word "Shree" in his trade mark in respect of ghee and that the respondent company thought that the registration of its trade mark with the word "Shree" contained in it would, per se, give it a right also to that word and that its intention was to launch infringement actions under the Act against any other trader who might happen to use the word "Shree" either alone or as part of his trade mark in respect of ghee. Further, the Registrar' may well have thought that the fact that all other traders who had got their trade marks containing the word "Shree" registered had had to submit to a disclaimer of the word "Shree" whereas the respondent company had got its trade mark containing the word "Shree" registered without a disclaimer was calculated to cause embarrassment to other traders and might conceivably encourage the respondent company to contend that the registration of its trade mark by itself and without further evidence gave it a proprietary....
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....iding upon the way it should exercise the discretionary power conferred on it. Reference has been made by the High Court to the observations of Eve, J. in the A.B.C. case referred to above and the question has been posed as to whether any good cause had been shown for the necessity of disclaimer in this case. The High Court answers the question immediately by saying that it did not think that any cause had been shown beyond the desirability of having a uniform practice. This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was that the company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would, in the circumstances of this case, give it a right to the exclusive use of the word "Shree" as if separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the po....