Case Law Compilation (Nizams)

IN THE HIGH COURT OF DELHI AT NEW DELHI
(Intellectual Property Division – Original Civil Jurisdiction)
C.O. (Comm-IPD/TM) ____of 2023
Chavvi Poplai & Anr. … Applicants

Versus
Rajesh Chugh & Anr. … Respondents
INDEX
. No. PARTICULARS PAGE No.
1. Anubhav Jain Versus Satish Kumar Jain and Ors. 01-08

(MANU/DE/0161/2023)
2. Burger King Corporation Versus Ranjan Gupta 09-25

&Ors
(2023/DHC/001661)
3. Three-N-Products Pvt. Ltd. Versus Kairali Exports 26-36
and Ors.
(2018/DHC/28)
4. Nakshatra Distilleries & Breweries Ltd. Versus 37-101
Radico Khaitan Limited and Ors.
(MANU/IC/0034/2018)
5. Pornsricharoenpun Co. Ltd and Ors. Versus L'Oreal 102-146
India Private Limited and Ors.
(MANU/DE/4515/2022)
6. SHREE GANESH BESAN MILLL AND ORS. Versus 147-179
GANESH GRAINS LIMITED AND ANR.
(MANU/WB/1013/2021)
7. Vasundhra Jewellers Pvt. Ltd. Versus Kirat 180-198
Vinodbhai Jadvani & Anr.
(MANU/DE/3577/2022)
8. Sun Pharma Laboratories Limited and Ors. Versus 199-215

Agila Specialties Private Limited and Ors.
(MANU/IC/0014/2020)
Through
ASHISH DEEP VERMA
Advocate for the Plaintiff

Vidhisastras Advocates & Solicitors
Eros Corporate Tower 15th Flor,
Nehru Place, New Delhi – 110019
Mobile No: 7678656736
E-Mail: [email protected]
Place: New Delhi

Date:
MANU/DE/0161/2023
Equivalent/Neutral Citation: 2023/DHC /000233
IN THE HIGH COURT OF DELHI

C.O. (COMM. IPD-TM) 55/2021
Decided On: 09.01.2023
Appellants: Anubhav Jain
Vs.
Respondent: Satish Kumar Jain and Ors.
Hon'ble Judges/Coram:
C. Hari Shankar, J.
Counsels:
For Appellant/Petitioner/Plaintiff: Kangan Roda and Nitesh Jain, Advs.
For Respondents/Defendant: Gaurav Barathi, Muskan Arora and Vishal Shrivastava,
Advs.
JUDGMENT
C. Hari Shankar, J.
1. This petition has been preferred by Anubhav Jain, one of the Directors in M/s. Jain
Shikanji Private Limited ("JSPL", hereinafter) under Sections 571 and 1252 of the
Trademarks Act, 1999 ("the Act", hereinafter), seeking cancellation of Certificate No.
2772286 dated 18th June 2021, whereby the device mark
was permitted to be registered in favour of

Respondent 1. Consequently, rectification of the register of the trademarks, by
removing, therefrom, the said registered trademark of Respondent 1 has also been
sought.
2 . Respondent 1 raised a preliminary objection to the maintainability of the present
suit, predicated on Section 124 of the Trademarks Act. By order dated 5th September
2022, this Court directed that the said objection would be taken up and decided in the
first instance.
3. I have heard Mr. Gaurav Barathi, learned Counsel for Respondent 1 and Ms. Kangan
Roda, learned Counsel for petitioner at length, on the said objection as raised by
Respondent 1 and proceed to decide the objection by this order.
4. The circumstances in which the aforesaid objection has been raised by Respondent 1,
have, in the first instance, to be noted. On 23rd September 2021, Respondent 1 filed CS
(Comm) 171/2021 against the petitioner before the learned Commercial Court,
Karkardooma ("the learned Trial Court", hereinafter), alleging that the manner in which
the petitioner was using the mark "JAIN SHIKANJI" was same as plaintiff's registered
mark "JAIN SHIKANJI". An application under Order XXXIX Rules 1 and 2 of the Code of
Civil Procedure, 1908 (CPC), seeking interlocutory injunction was also filed by
25-08-2023 (Page 1 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

Respondent 1 in the said suit.
5. By order dated 5th November 2022, the learned Trial Court allowed Respondent 1's
application under Order XXXIX Rules 1 and 2 of the CPC and passed an interlocutory
order of injunction against the petitioner. The petitioner has challenged the said
decision by way of FAO (Comm)185/2022, which is presently pending before a Division
Bench of this Court. Admittedly, no interlocutory orders have been passed in the said
appeal, till date.
6. While proceedings emanating from CS (Comm) 171/2022 stood thus, the petitioner
instituted the present petition before this Court under Section 57 of the TradeMarks Act,
seeking, as already noted, cancellation of the registration granted to the
trademark of Respondent 1 and consequent rectification of

the trade mark register.
7 . Mr. Barathi, learned Counsel for Respondent 1 contests the maintainability of the
present petition, relying for the said purpose, on Section 124 of the Trademarks Act.
8. Section 124 of the Trademarks Act sets out a specific scheme. Plainly read, it applies
only where there is, to begin with, a suit, alleging infringement of trademark, pending
before a Civil Court. Mr. Barathi submits that CS (Comm) 171/2021 is the suit,
instituted by Respondent 1 against the petitioner, on the basis of which he invokes
Section 124.
9. Section 124 proceeds to envisage two situations, under clauses (a) and (b) of sub-
section 1 thereof. Of these, Mr. Barathi concedes that Clause (b) does not apply.
1 0 . Clause (a) of Section 124(1) applies where, in a suit for infringement of a
trademark, the defendant pleads that registration of the plaintiff's trade mark is invalid.
In CS (Comm) 171/2021, JSPL is the defendant and Respondent 1 is the plaintiff.
11. In order for Section 124(1)(a) would apply, therefore, it would be necessary for
JSPL, as the defendant in CS (Comm) 171/2021, to have pleaded, in that suit, that the
registration of Respondent 1's trademark is invalid. Ms. Roda, learned Counsel for the
petitioner, submitted that this requirement, which is a pre-condition for Section 124 to
apply, was itself not satisfied, as JSPL never pleaded, as a defence to CS(Comm)
171/2021, invalidity of Respondent 1's trademark.

12. Though Mr. Barathi initially sought to submit that such a pleading had been made
by the petitioner, he, thereafter, on perusing the record acknowledging that, in the
written statement, filed by way of reply to CS(Comm) 171/2021, no such plea of
invalidity of Respondent 1's trademark has been

raised, though he submits that, in FAO(Comm) 185/2022, the petitioner has so averred.
13. Even on this sole ground, therefore, it would be apparent that Section 124 would
not apply in the present case at all.

14. Proceeding further with the ingredients of Section 124, where the case falls within
Clause (a) or (b) of the first part of Section 124, the provision goes on to deal again,
with two situations, in Clause (i) and (ii) which follow in the second part of the section.
Between these clauses, too, Mr. Barathi acknowledge that clause (i) would not apply, as
no proceedings for rectification of the register, instituted by the petitioner, were
pending at the time when CS (Comm) 171/2022 was filed or was being taken up by the
learned Trial Court. He, however, presses into service clause (ii).
15. Clause (ii) in Section 124 states that,
(a) if no proceedings for rectification of the register, in relation to the
trademark of either of the parties in the suit, is pending before the Registrar of
Trademarks, and
(b) the Court is satisfied that the plea regarding invalidity of registration, as
raised in the suit is, prima facie, tenable, then, the Court is required to
(i) raise an issue regarding the validity of the contested trademark and
(b) adjourn a case for three months in order to enable the party
assailing the validity of the contested trademark to apply to the High
Court (earlier the learned IPAB) for rectification of the register.
1 6 . This clause, too, on its face, does not apply as no plea of invalidity of the
registration of Respondent 1's mark was urged by the petitioner, as the defendant in CS
Comm) 171/2021.
17. Assuming such a plea had been raised, what the clause envisages, in a situation
where no proceeding for rectification of the register of trade mark is pending and the
learned Trial Court is satisfied regarding prima facie tenability of the plea regarding
invalidity of the registration of the trade mark, as raised as a defence in the suit, is that
the learned Trial Court would, then, raise an issue regarding validity of the contested
trademark and adjourn the case for three months to enable the contesting defendant to
apply to the High Court (earlier the learned IPAB) for rectification of the register of
trade marks.
18. Section 124, therefore, applies in certain specific circumstances, envisaged in that
provision and in none else. These may be enumerated thus :
(i) In the first instance, there must be a suit by a plaintiff against a defendant
alleging infringement, by the defendant, of the plaintiff's trademark.
(ii) The defendant must, in the said suit, raise as a plea in defense, invalidity of
the plaintiff's trademark.
(iii) At that time, no proceedings for rectification should be pending.
(iv) The learned Trial Court hearing the suit, should be satisfied, prima facie,
that the plea of invalidity of the plaintiff's trademark, as raised by the
defendant, is tenable.
Where all these circumstances coalesce, Section 124 requires the learned Trial Court to
raise an issue regarding validity of the plaintiff's trademark and adjourned the case in
order to enable the defendant to move the appropriate forum- now the High Court-for
rectification of the register.

1 9 . Apart from the fact that, in the facts of the present case, Section 124 has no
application, as the petitioner never raised, in its written statement by way of defence to
CS (Comm) 171/2021 instituted by Respondent 1, a plea of invalidity of Respondent 1's
trademark as a ground of defence. Even otherwise, Section 124 cannot possibly be read
in a manner as to defeat the right of the petitioner (defendant in the suit) to defend the
independent right of the petitioner to invoke Section 57 of the Trademarks Act, seeking
rectification of the register of trademark and cancellation of the trademark of
Respondent 1. That as an independent right, independently conferred by Section 57 of
the Trademarks Act.
20. In fact, the judgment of the Supreme Court in Patel Field Marshal Agencies v. P.M.
Diesels Ltd MANU/SC/1509/2017 : (2018) 2 SCC 112, on which Mr. Barathi sought to
place reliance, underscores this position. Mr. Barathi emphasized paras 29, 31, 34 and
35 of the said decision, which read thus:
"29. The above seems to become more clear from what is to be found in
Section 111 of the 1958 Act which deals with "stay of proceedings where the
validity of registration of the trade mark is questioned". The aforesaid provision
of the 1958 Act specifically provides that if a proceeding for rectification of the
register in relation to the trade mark of either the Plaintiff or the Defendant is
pending before the Registrar or the High Court, as may be, and a suit for
infringement is filed wherein the aforesaid plea is raised either by the
Defendant or by the Plaintiff, the suit shall remain stayed. Section 111 further
provides if no proceedings for rectification are pending on the date of filing of
the suit and the issue of validity of the registration of the Plaintiff's or the
Defendant's trade mark is raised/arises subsequently and the same is prima
facie found to be tenable, an issue to the aforesaid effect shall be framed by the
Civil Court and the suit will remain stayed for a period of three months from the
date of framing of the issue so as to enable the concerned party to apply to the
High Court for rectification of the register. Section 111(2) of the 1958 Act
provides that in case an application for rectification is filed within the time
allowed the trial of the suit shall remain stayed. Sub-section (3) of Section 111
provides that in the event no such application for rectification is filed despite
the order passed by the Civil Court, the plea with regard to validity of the
registration of the trade mark in question shall be deemed to have been
abandoned and the suit shall proceed in respect of any other issue that may
have been raised therein. Sub-section (4) of Section 111 provides that the final
order as may be passed in the rectification proceeding shall bind the parties
and the civil court will dispose of the suit in conformity with such order insofar
as the issue with regard to validity of the registration of the trade mark is
concerned.
*****
31. Rather, from the resume of the provisions of the 1958 Act made above it
becomes clear that all questions with regard to the validity of a Trade Mark is
required to be decided by the Registrar or the High Court under the 1958 Act or
by the Registrar or the IPAB under the 1999 Act and not by the Civil Court. The
Civil Court, infact, is not empowered by the Act to decide the said question.
Furthermore, the Act mandates that the decisions rendered by the prescribed
statutory authority [Registrar/High Court (now IPAB)] will bind the Civil Court.
At the same time, the Act (both old and new) goes on to provide a different
procedure to govern the exercise of the same jurisdiction in two different

situations. In a case where the issue of invalidity is raised or arises
independent of a suit, the prescribed statutory authority will be the sole
authority to deal with the matter. However, in a situation where a suit is
pending (whether instituted before or after the filing of a rectification
application) the exercise of jurisdiction by the prescribed statutory authority is
contingent on a finding of the Civil Court as regards the prima facie tenability of
the plea of invalidity.
*****
34. The intention of the legislature is clear. All issues relating to and connected
with the validity of registration has to be dealt with by the Tribunal and not by
the civil court. In cases where the parties have not approached the civil court,
Sections 46 and 56 provide an independent statutory right to an aggrieved
party to seek rectification of a trade mark. However, in the event the Civil Court
is approached, inter alia, raising the issue of invalidity of the trade mark such
plea will be decided not by the civil court but by the Tribunal under the 1958
Act. The Tribunal will however come into seisin of the matter only if the Civil
Court is satisfied that an issue with regard to invalidity ought to be framed in
the suit. Once an issue to the said effect is framed, the matter will have to go to
the Tribunal and the decision of the Tribunal will thereafter bind the Civil Court.
If despite the order of the civil court the parties do not approach the Tribunal
for rectification, the plea with regard to rectification will no longer survive.
3 5 . The legislature while providing consequences for non-compliance with
timelines for doing of any act must be understood to have intended such
consequences to be mandatory in nature, thereby, also affecting the substantive
rights of the parties. This is how Section 111(3) of the 1958 Act has to be
understood. That apart, it is very much within the legislative domain to create
legal fictions by incorporating a deeming Clause and the court will have to
understand such statutory fictions as bringing about a real state of affairs
between the parties and ushering in legal consequences affecting the parties
unless, of course, there is any other contrary provision in the statue. None
exists in the 1958 Act to understand the provisions of Section 111(3) in any
other manner except that the right to raise the issue of invalidity is lost forever
if the requisite action to move the High Court/IPAB (now) is not initiated within
the statutorily prescribed time frame."
21. Mr. Barathi specifically stressed on the following sentences from para 30 of the said
report.
"In cases where the parties have not approached the civil court, Sections 46
and 56 provide an independent statutory right to an aggrieved party to seek
rectification of a trade mark. However, in the event the Civil Court is
approached, inter alia, raising the issue of invalidity of the trade mark such plea
will be decided not by the civil court but by the Tribunal under the 1958 Act.
The Tribunal will however come into seisin of the matter only if the Civil Court
is satisfied that an issue with regard to invalidity ought to be framed in the suit.
Once an issue to the said effect is framed, the matter will have to go to the
Tribunal and the decision of the Tribunal will thereafter bind the Civil Court."
2 2 . Mr. Barathi's contention is that the afore-extracted passages from Patel Field
Marshal Agencies MANU/SC/1509/2017 : (2018) 2 SCC 112 clearly envisage that, once

a suit for infringement is filed by the plaintiff against the defendant, and the defendant
raises the plea of invalidity of the plaintiff's mark as a ground of defence in the said
suit, the defendant loses all right to independently invoke Section 57 of the Trade Marks
Act to seek rectification of the register and cancellation of the plaintiff's mark. According
to him, the Supreme Court has clearly held that, in such circumstances, the learned
IPAB-now the High Court-would acquire seisin over the issue of validity of the plaintiff's
trademark only where the matter suffers the drill of clause (ii) in the second part of
Section 124 of the Trademarks Act, i.e. where the Court finds, prima facie, the plea of
invalidity as raised by the defendant to be tenable, frames an issue in that regard and
thereafter adjourns the matter for three months in order to enable the defendant to seek
rectification of the register of trademarks before the appropriate forum. It is only at that
stage, submits Mr. Barathi, that the defendant can move for rectification of the register
of trade marks. Section 57, therefore, according to Mr. Barathi, ceases to be available to
a defendant in a suit the moment the defendant raises a plea of invalidity of the
plaintiff's trademark as a ground of defence.
23. I am unable to subscribe to this view. Indeed, in my considered opinion, Patel Field
Marshal Agencies MANU/SC/1509/2017 : (2018) 2 SCC 112 indicates to the contrary.
2 4 . The sentences from the decision in Patel Field Marshal Agencies
MANU/SC/1509/2017 : (2018) 2 SCC 112 extracted in para 21 (supra) and on which Mr.
Barathi placed reliance, in fact, clearly indicate that the right conferred on the defendant
in an infringement suit, to move the learned IPAB, or this Court, for rectification of the
register of marks is an independent right. This clearly indicates that it is a right which is
independent of other rights available under the Trade Marks Act for the same purpose.
It has, therefore, to be treated as available in addition to the right available and
conferred by Section 57. It cannot be read as the only right available, in abrogation of
Section 57 of the Trade Marks Act. The position that emerges is, therefore, that, while
the right under Section 57, for cancellation of a mark and rectification of the register
remains available, of an infringement suit has been filed by the opposite party and the
defendant pleads invalidity of the plaintiff's mark as a ground of defence to the suit, the
defendant would acquire an independent right under Clause (ii) of Section 124 of the
Trademarks Act to move the learned IPAB (now the High Court) for rectification of the
register.
2 5 . The right available under Clause (ii) of the second part of Section 124 of the
Trademarks Act is not, therefore, in derogation of the right available under Section 57.
It is in addition to the said right. It does not, therefore, detract from the right that
Section 57 otherwise confers.
26. The passages from Patel Field Marshal Agencies MANU/SC/1509/2017 : (2018) 2
SCC 112 on which Mr. Barathi placed reliance, merely set out the statutory scheme
available under Section 124 of the Trade Marks Act "equivalent to Section 111 of the
Trade Marks Act, 1958, with which the Court was concerned in that case. All that the
Supreme Court has held is that, where the procedure under Clause (ii) of the second
part of Section 124 of the Trade Marks Act is set in motion, the learned IPAB, or the
High Court, would acquire seisin over the issue of validity of the contested trade mark
only when, (i) in the first instance, the Civil Court expresses prima facie agreement with
the plea of invalidity as raised, (ii) an issue is framed in that regard, (iii) the matter is
adjourned by the Civil Court and (iv) the defendant, thereafter, moves for rectification
of the register. That does not, in any manner, take away from the right of the defendant
to independently invoke Section 57.

27. Two well settled principles of construction by precedents, especially in the context
of Article 141 of the Constitution of India are required to be born in mind in this regard.
The first is that a judgment of the Supreme Court is to be read only as an authority for
what it states, and not what may logically be seem to follow from it.3 The second
principle is that judgments of the Supreme Court are not to be read as Euclid's
theorems, but are to be understood in the background of the facts in which they were
rendered.4 Thus understood, paras 31 and 34 of the decision in Patel Field Marshal
Agencies MANU/SC/1509/2017 : (2018) 2 SCC 112 merely clarifies the scheme of
Section 124 of the Trade Marks Act and does not in any manner hold, as Mr. Barathi
would seek to contend, that the right available under Section 57 stood eviscerated
thereby.
28. The Supreme Court, in Patel Field Marshal Agencies MANU/SC/1509/2017 : (2018)
2 SCC 112, was not concerned with the right available to a person under Section 57 of
the Trade Marks Act. As such, the judgment cannot be said to be an authority on the
point that, once an infringement suit is filed against the defendant, the defendant loses
its right to seek cancellation of the plaintiff's trademark under Section 57 of the Trade
Marks Act.
29. If the plea of Mr. Barathi were to be accepted, it would amount to the Court reading
Section 57 of the Trademarks Act as subject to Section 124. There is no clause in
Section 57 of the Trade Marks Act, which makes it subject to any other provision in the
Trade Marks Act. Nor does one find in Section 124 of the Trade Marks Act, any non
obstante clause which would accord it pre-eminence over other provisions in the Trade
Marks Act.
30. In that view of the matter, in my considered opinion, the right to seek cancellation
of a mark and rectification of the register, conferred by Section 57 and by Clause (ii) of
the second part of Section 124 of the Trade Marks Act are independent rights, which are
both available for invocation by an interested party.
31. It cannot, therefore, be said that the present petition is not maintainable or that the
petitioner ought to have obtained leave of the learned Trial Court before instituting the
present petition. The preliminary objection of maintainability as raised by Mr. Barathi is,
therefore, rejected.
C.O. (COMM.IPD-TM) 55/2021
32. Ms. Kangan Roda seeks and is granted two weeks' time to place the rejoinder to the
reply filed by the respondents to this petition on record.
33. Renotify on 8th February 2023 for disposal.
1 57.Power to cancel or vary registration and to rectify the register.-(1) On application

made in the prescribed manner to the High Court or to the Registrar by any person
aggrieved, the Registrar or the High Court, as the case may be, may make such order as
it may think fit for cancelling or varying the registration of a trade mark on the ground
of any contravention, or failure to observe a condition entered on the register in relation
thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or
by any entry made in the register without sufficient cause, or by any entry wrongly

remaining on the register, or by any error or defect in any entry in the register, may
apply in the prescribed manner to the High Court or to the Registrar, and the Registrar
or the High Court, as the case may be, may make such order for making, expunging or
varying the entry as it may think fit.
(3) The Registrar or the High Court, as the case may be, may in any proceeding under
this section decide any question that may be necessary or expedient to decide in
connection with the rectification of the register.
(4) The Registrar or the High Court, as the case may be, of its own motion, may, after
giving notice in the prescribed manner to the parties concerned and after giving them
an opportunity of being heard, make any order referred to in sub-section (1) or sub-
section (2).
(5) Any order of the High Court rectifying the register shall direct that notice of the
rectification shall be served upon the Registrar in the prescribed manner who shall upon
receipt of such notice rectify the register accordingly.
2 125. Application for rectification of register to be made to High Court in certain cases.-
(1) Where in a suit for infringement of a registered trade mark the validity of the
registration of the plaintiff's trade mark is questioned by the defendant or where in any
such suit the defendant raises a defence under clause (e) of sub-section (2) of Section
30 and the plaintiff questions the validity of the registration of the defendant's trade
mark, the issue as to the validity of the registration of the trade mark concerned shall
be determined only on an application for the rectification of the register and,
notwithstanding anything contained in Section 47 or Section 57, such application shall
be made to the High Court and not to the Registrar.
(2) Subject to the provisions of sub-section (1), where an application for rectification of
the register is made to the Registrar under Section 47 or Section 57, the Registrar may,
if he thinks fit, refer the application at any stage of the proceedings to the High Court.
3 Refer State of Orissa v. Sudhansu Sekhar Misra MANU/SC/0047/1967 : AIR 1968 SC
647
4 ReferState of Bihar v. Meera Tiwary MANU/SC/1149/2019 : (2020) 17 SCC 305 ,
Bharat Petroleum Corporation Ltd. v. N.R Vairamani MANU/SC/0850/2004 : (2004) 8
SCC 579
© Manupatra Information Solutions Pvt. Ltd.

This is a True Court Copy™ of the judgment as appearing on the Court website.
MANU/DE/1417/2023 : Downloaded from www.manupatra.com
Printed on : 21 Dec 2023 Printed for : Vidhisastras Advocates & Solicitors
2023/DHC/001661
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on : 22nd February, 2023

Judgment delivered on : 6th March, 2023
b
+ CS(COMM) 229/2018
BURGER KING CORPORATION ..... Plaintiff

Through: Mr. Raunaq Kamath, Mr.Aditya
c Gupta, Mr. Mukul Kochhar and
Mr.Rajul Bajaj, Advocates.
versus
RANJAN GUPTA & ORS ..... Defendants

d Through: Mr. Shailen Bhatia, Mr.Raghav
Bhalla, Ms. Sreelakshmi Menon and
Mr.Nakul Mehta, Advocates.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
e JUDGMENT
1. The present suit has been filed on behalf of the plaintiff seeking relief
of permanent injunction restraining the defendants from infringing
plaintiff‟s trademark „BURGER KING‟ and its formative marks, passing off
f
their goods as that of the plaintiff along with other ancillary reliefs.
2. The plaintiff has obtained various registrations in respect of its mark
„BURGER KING‟ and its formative marks in various classes. Details of the
g registration of the said marks are given in Annexure A annexed to the plaint.
3. Vide order dated 25th July, 2014, an ex parte ad interim injunction
was granted in favour of the plaintiff restraining the defendants from using
the trademark „BURGER KING‟ or any other deceptively similar mark.
h Subsequently, vide order dated 24th September, 2018, the aforesaid interim
Signature Not Verified

Digitally Signed By:AMIT
BANSAL
CS(COMM) 229/2018 Page

Signing 1 of 16 16:14:37
Date:06.03.2023
2023/DHC/001661
order was confirmed till the final adjudication of the present suit. Appeal is
stated to have been filed on behalf of the defendant, which is pending before
the Division Bench of this Court.
b
4. It was noted in the order dated 18th February, 2020 passed in the suit
that one of the defences raised by the defendants in their written statement is
that the plaintiff‟s registered trademark „BURGER KING‟ is liable to be
c cancelled. It was observed that the first question that is required to be

adjudicated in the present case is whether the case of the defendants on this
account is prima facie tenable.
5. Submissions on behalf of the parties on the aforesaid aspect were
d heard on 16th January, 2023, 24th January, 2023 and 22nd February, 2023.
6. Counsel appearing for the plaintiff has made the following
submissions:
I. In terms of Section 124(1)(b)(ii) of the Trademarks Act, 1999
e
(hereinafter „Act‟), the Court shall raise an issue regarding the plea of
invalidity of a registered trademark only upon being satisfied that
such a plea is prima facie tenable. From the date of framing of the
said issue, the Court shall adjourn the case for a period of three
f
months in order to enable the concerned party to apply for
rectification of the register.
II. It is necessary for the Court to determine the prima facie tenability of
g the plea of invalidity of the registered trademark raised by the
defendant in order to ensure that the defendants do not institute
rectification proceedings as a counter blast to the infringement actions
filed against them. Reliance in this regard is placed on the judgments
h of the Supreme Court in Patel Field Marshal Agencies v. P.M.

BANSAL

Signing 2 of 16 16:14:37
Date:06.03.2023
2023/DHC/001661
Diesels Ltd, (2018) 2 SCC 112 and Abbott Healthcare Pvt. Ltd. v.
Raj Kumar Prasad & Anr., 2018 SCC OnLine Del 6657.
III. A total of 13 rectification petitions have been filed on behalf of the
b
defendants seeking cancellation of the trademark registrations of the
plaintiff, of which four are listed before this Court today. The
remaining nine were filed before different benches of Intellectual
c Property Appellate Board (IPAB) and are liable to be transferred

before different High Courts after coming into effect of the Tribunals
Reforms Act, 2021.
IV. The grounds taken by the defendants in their written statement with
d regard to invalidity of the registration of the trademarks of the
plaintiff are not tenable at all. The ground of „non-use‟ of the
registered trademark of the plaintiff taken by the defendants under
Section 47 of the Act, is not tenable as the defendants have failed to
e
show that the plaintiff had an intention to abandon the use of their
trademark in India. Reliance in this regard is placed on Hardie
Trading Ltd. & Anr. v. Addissons Paint & Chemical Ltd., (2003) 11
SCC 92, and Express Bottlers Services Private Ltd. v. Pepsico Inc. &
f
Ors., 1988 SCC OnLine Cal 62.
V. Prior to the launch of BURGER KING restaurant in India in
November, 2014, the plaintiff had taken various steps towards the
g launch of the said restaurant in India, which would constitute „use‟
under Section 47 of the Act.
VI. The defendants are estopped from taking the defence that the
trademark „BURGER KING‟ is generic and common to the trade and
h hence, cannot be registered as a trademark, as the defendants

BANSAL

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themselves have applied for registration of the said trademark.

Reliance in this regard is placed on the judgments of the Division
Bench of this Court in Indian Hotels Company Limited & Anr. v.
b
Jiva Institute of Vedic Science & Culture, 2008 SCC OnLine Del
1758 and PEPS Industries Private Limited v. Kurlon Limited, 2022
SCC OnLine 3275.
c VII. The plaintiff has used the trademark „BURGER KING‟ since 1954
and the said mark has acquired secondary meaning and is exclusively
associated with the plaintiff. Further, the plaintiff has obtained
registrations of the trademark „BURGER KING‟ in over 122
d countries.
7. Counsel appearing for the defendants has made the following
submissions:
I. The defendant no.2 through its predecessor adopted the trademark
e
BURGER KING in the year 1970. Since then the defendants have
extensively used the said mark in respect of their business.
II. The plaintiff has no exclusive right in the word „BURGER‟ as the
same is generic and common to trade and the word „KING‟ is
f
laudatory. Two generic/laudatory words cannot create a distinctive
trademark. Therefore, the trademark „BURGER KING‟ cannot be
registered. Reliance in this regard is placed on the judgment in
g National Bell Co. v. Gupta Industrial Corporation, 1970 (3) SCC
665.
III. The registrations of the plaintiff are liable to be rectified on various
grounds including on the ground of „non-user‟ under Section 47 of the
h Act. It has been averred by the plaintiff in paragraph 17 of the plaint

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that the plaintiff was not using the said trademark in India at the time
of filing of the present suit.
IV. The rectification petitions have been filed by the defendants in
b
November, 2014 and therefore, the relevant period of five years to be
considered in terms of Section 47 (1) (b) of the Act would commence
from three months before the date of filing of the aforesaid
c rectification petitions, i.e., August, 2009 to August, 2014. In the said

period, the plaintiff has failed to give evidence of its user of the
trademark BURGER KING in India.
V. The issues with regard to the invalidity of the plaintiff‟s trademarks
d arise out of the pleadings and therefore, the said issue has to be
framed in terms of Order XIV of the Code of Civil Procedure, 1908
(CPC) as well as Section 124 of the Act. Reliance in this regard is
placed on the judgment in Abbott Healthcare (supra).
e
VI. The judgments cited on behalf of the plaintiff are distinguishable on
facts and therefore, not applicable to the present case.
8. I have heard the counsels for the parties.
9. At the outset, a reference may be made to the relevant portion of
f
Section 124 of the Act, which is set out below:
“124. Stay of proceedings where the validity of registration
of the trade mark is questioned, etc.—(1) Where in any suit
for infringement of a trade mark—
g
(a) the defendant pleads that registration of the plaintiff’s
trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-
section (2) of section 30 and the plaintiff pleads the invalidity
of registration of the defendant’s trade mark,
h

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the court trying the suit (hereinafter referred to as the court),

shall,—
(i) if any proceedings for rectification of the register in
b relation to the plaintiff’s or defendant’s trade mark are
pending before the Registrar or the [High Court], stay the suit
pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is
satisfied that the plea regarding the invalidity of the
c registration of the plaintiff’s or defendant’s trade mark is
prima facie tenable, raise an issue regarding the same and
adjourn the case for a period of three months from the date
of the framing of the issue in order to enable the party
concerned to apply to the [High Court] for rectification of
the register.
d
(2) If the party concerned proves to the court that he has made
any such application as is referred to in clause (b) (ii) of sub-
section (1) within the time specified therein or within such
extended time as the court may for sufficient cause allow, the
trial of the suit shall stand stayed until the final disposal of the
e rectification proceedings.”
10. Sub clause (a) of Sub Section (1) of Section 124 of the Act deals with
the situation where a defendant pleads that the registration of the plaintiff‟s
trademark is invalid, as in the present case. Sub clause (b) (i) envisages a
f
situation where the rectification proceedings are pending on the date of
filing of the suit, which is not the situation in the present case. Sub clause (b)
(ii) deals with the situation where the rectification proceedings have been
g filed subsequent to the filing of the suit and therefore, this sub clause would
be applicable in the present case as admittedly, the rectification proceedings
were filed on behalf of the defendants after filing of the present suit.
11. A perusal of sub clause (b) (ii) of Section 124(1) of the Act shows that
h the Court has to be satisfied that the plea regarding the invalidity of

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registration of the trademark is prima facie tenable. Thereupon, the Court

may raise an issue regarding the same and adjourn the case for a period of
three months from the date of framing of the said issue to enable the
b
concerned party to apply for rectification of the register. It is significant to
note that there is no “or” between the words “prima facie tenable” and
“raise an issue regarding the same”. In fact, the aforesaid phrases are
c separated by “,” which means that the Court will proceed to frame the issue
with regard to invalidity of the registration of the trademark only upon being
satisfied that the plea of invalidity is prima facie tenable. Thereupon, the
defendant can file a rectification petition.
d 12. I am in agreement with the submission of the plaintiff that the finding
of prima facie tenability is a statutory safeguard to ensure that the
defendants do not file rectification proceedings as a counter blast to the
infringement actions against them, unless their plea of invalidity is prima
e
facie tenable. If this were not so, the defendants would be permitted to
challenge the registrations of the plaintiff by filing rectification petitions on
frivolous and untenable grounds. It is for this reason that the legislature has
placed the safeguard of prima facie tenability in cases where the rectification
f
proceedings are filed after a suit for infringement has been filed, whereas no
such safeguard is there in cases where rectification proceedings have been
filed before the suit.
g 13. In Patel Field Marshal (supra), the Supreme Court observed that
where a civil suit is pending, the jurisdiction can be exercised by a statutory
authority only on account of finding of the Civil Court as regards the prima
facie tenability of the plea of invalidity. It was further observed that such a
h finding is a basic requirement so that false, frivolous and untenable claims of

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invalidity are not raised.

14. In Abbott Healthcare (supra), relying upon Patel Field Marshal
(supra), a Coordinate Bench of this Court observed that mere pleading of
b
invalidity of registration would not suffice and there is a further requirement
under Section 124 of the Act that the party invoking Section 124 must
satisfy the Court that the plea regarding invalidity of the registration of the
c mark is prima facie tenable and the Court raises an issue regarding the same.
It was further observed that under Order XIV Rule 1 of the CPC, issues have
to be framed on the basis of material propositions of fact or law and not on
all propositions of fact or law raised in the pleadings. A reading of Section
d 124 of the Act along with Order XIV Rule 1 of CPC shows that an issue
with regard to validity of the registration granted in favour of the plaintiff
can only be framed, when the plea to the said effect taken by the defendant
is found prima facie tenable. Therefore, I do not find merit in the submission
e
of the defendant that merely because pleadings have been made in the
written statement with regard to invalidity of the plaintiff‟s trademark, an
issue has to be necessarily framed in this regard.
15. In light of the principles of law elucidated in the aforesaid judgments,
f
this Court would have to examine whether the plea of invalidity raised on
behalf of the defendants is prima facie tenable or not.
16. The first ground of invalidity taken by the defendants is in terms of
g Sections 47(1)(b) and 47(3) of the Act. For ease of reference, Sections
47(1)(b) and 47(3) are set out below:
“47. Removal from register and imposition of limitations on
ground of non-use- (1) A registered trade mark may be taken
off the register in respect of the goods or services in respect of
h which it is registered on application made in the prescribed

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manner to the Registrar or the [High Court] by any person

aggrieved on the ground either—....
(a)…
b
(b) that up to a date three months before the date of the
application, a continuous period of five years from the date
on which the trade mark is actually entered in the register or
longer had elapsed during which the trade mark was
registered and during which there was no bona fide use
c thereof in relation to those goods or services by any
proprietor thereof for the time being:
XXX XXX XXX
d (3) An applicant shall not be entitled to rely for the purpose

of clause (b) of sub-section (1) or for the purposes of sub-
section (2) on any non-use of a trade mark which is shown to
have been due to special circumstances in the trade, which
includes restrictions on the use of the trade mark in India
imposed by any law or regulation and not to any intention to
e abandon or not to use the trade mark in relation to the goods
or services to which the application relates.”
17. Section 47(1)(b) of the Act provides that a registered trademark may
be removed from the register of trademarks if up to a date of three months
f
before the date of cancellation application, a continuous period of five years
or longer has elapsed from the date on which the trademark was entered in
the register and during which period, there was no bonafide use of the mark
by the registered proprietor in relation to the said goods. Section 47(3)
g
contains an exception to Section 47(1)(b) and provides that if the „non-use‟
of a trademark is on account of special circumstances and not on account of
intention to abandon or not to use the trademark, the provisions of Section
h 47(1)(b) will not apply.

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18. The aforesaid provisions were considered by the Supreme Court in

Hardie (supra) in the context of Sections 46(1)(b)1 and 46(3)2 of the
Trademark Act, 1958 (hereinafter „old Act‟), which is pari materia with the
b
provisions of Section 47(1)(b) and Section 47(3) of the present Act. In
Hardie (supra), relying upon the definition of „bona fide use thereof in
relation to those goods” in Section 2(2)(b) of the old Act, it was observed by
c the Supreme Court that the „use‟ may be other than physical and it need not
be confined to use of the goods or sale of the goods bearing the trademark. It
was held that the word „use‟ in Section 46(1)(b) of the old Act may include
actions other than the actual sale of the goods bearing the trademark in
d question in the market. Taking note of the words „any’ and „whatsoever’
qualifying the words “other relation” in Section 2(2)(b) of the old Act, it was
held that the aforesaid words give a wider meaning to the words “other
e 1
46. Removal from register and imposition of limitations on ground of non-
use.—(1) Subject to the provisions of Section 47, a registered trade mark may be
taken off the register in respect of any of the goods in respect of which it is
registered on application made in the prescribed manner to a High Court or to the
Registrar by any person aggrieved on the ground….
XXX XXX XXX
f (b) that up to a date one month before the date of the application, a continuous
period of five years or longer had elapsed during which the trade mark was
registered and during which there was no bona fide use thereof in relation to those
goods by any proprietor thereof for the time being:
2
46. Removal from register and imposition of limitations on ground of non-
use —
g XXX XXX XXX
(3) An applicant shall not be entitled to rely for the purpose of clause (b) of
sub-section (1) … on any non-use of a trade mark which is shown to have been
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 relates.

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relation”. Section 2(2)(b)3 of the old Act is pari materia with Section
2(2)(c)4 of the present Act.
19. It was further held in Hardie (supra) that the intention to abandon
b
could not be limited to „special circumstances of the trade‟. The intention to
abandon is an essential component of „non-use‟ for the purposes of Section
46(1)(b) of the old Act. Therefore, it has to be proved that there was an
c intention to either abandon or not to use the trademark.

20. In Express Bottlers (supra), it was held by the Supreme Court that the
„non-user‟ under Section 46(1)(b) of the Old Act has to be proved by the
applicant. It was further held that the intention to abandon by the proprietor
d of the mark has to be proved by cogent evidence. To determine whether a
mark has been abandoned by the proprietor thereof, the surrounding
circumstances have to be seen and until the intention to abandon is
established on account of surrounding circumstances, it cannot be stated that
e
the proprietor has decided to abandon the trademark.
21. In light of the above, it has to be examined whether there has been a
„non-use‟ of the trademark by the plaintiff in the aforesaid period of five
years or an intention to abandon the said trademark. To buttress his
f
3
2. Definitions and Interpretations –
(2) In this Act, unless the context otherwise requires, any reference—
xxx xxx xxx
(b) to the use of a mark in relation to goods shall be construed as a reference to the use of
g the mark upon, or in any physical or in any other relation whatsoever, to such goods.
4
2. Definitions and Interpretations –
(2) In this Act, unless the context otherwise requires, any reference—
c) to the use of a mark,—
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any
physical or in any other relation whatsoever, to such goods;
h (ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of
any statement about the availability, provision or performance of such services;

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submission that the trademark „BURGER KING‟ has been used by the
plaintiff within the aforesaid period of five years and that there has been no
intention to abandon the trademark, the counsel for the plaintiff has drawn
b
attention of the Court to the following documents filed along with the plaint:
i. Resolution of Board of Directors of plaintiff company passed in
October, 2013 permitting the use of „BURGER KING‟ trademark as a
c part of the company to be incorporated in India.

ii. Incorporation Certificate dated 11th November, 2013 in the name of
„BURGER KING Private Limited‟ to provide restaurant services in
India.
d iii. Announcement dated 19th November, 2013 on the plaintiff‟s website
that it is entering into a joint venture to develop „BURGER KING‟
brand in India and set up BURGER KING Restaurants in India.
iv. Various newspaper articles of November, 2013 with regard to
e
plaintiffs entering into Indian market.
22. Counsel for the defendants has placed reliance on paragraph 17 of the
plaint to contend that the plaintiff had no intention to use the aforesaid
trademark in India at the time of filing of the present suit. Paragraph 17 of
f
the plaint is set out below:
“17. On account of the inclusion of 'beef in the Plaintiff’s
burgers, (which in the Indian context would have previously
made the conduct of the Plaintiff’s business unviable) the
g Plaintiff had not launched a BURGER KING restaurant in
India. However, owing to globalization and transformation in
the Indian development and consequent on conducting
exhaustive feasibility studies which have indicated the
readiness of the Indian market for the Plaintiff’s world-
renowned restaurants, in 2013, the Plaintiff has entered into a
h Joint Venture with Everstone Group, a leading private equity

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and real estate firm in India and South East Asia, to set up a
supply chain in India and establish BURGER KING
restaurants across the country.”
b 23. A reading of paragraph 17 of the plaint as a whole shows that the
plaintiff has stated that the plaintiff has not launched BURGER KING
restaurant in India till date as plaintiff‟s burgers include beef. However, in
the latter part of the said paragraph, it has been stated that on account of
c
transformation of the Indian market, the plaintiff has set up a joint venture in
India to establish BURGER KING restaurants in India. Therefore, the
aforesaid paragraph cannot be read in a manner as sought to be read by the
d the defendant.
24. In Radico Khaitan Ltd. v. M/s. Devans Modern Breweries Ltd., 2019
SCC OnLine Del 7483, relying upon Hardie (supra), it was held that the
pre-launch and preparatory activities before the launch of the product
e bearing the trademark would amount to „use‟ under the Act. In this case
also, the plaintiff had entered into an agreement for supply of glass bottles in
respect of its trademark and other preparatory work was also undertaken by
the plaintiff in relation to the use of its trademark.
f
25. Therefore, in light of the discussion above, I am satisfied that there
was „bona fide use‟ on behalf of the plaintiff of the trademark „BURGER
KING‟ in the relevant period between August, 2009 and August, 2014 and
there was no intention on behalf of the plaintiff to abandon the said
g
trademark. It may be relevant to note that as a consequence of the
preparatory work carried out by the plaintiff, the first BURGER KING
restaurant was opened in India on 9th November, 2014 and as on date there
h are more than 300 BURGER KING Restaurants in India.

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26. The other ground taken on behalf of the defendants is that the
trademark „BURGER KING‟ being generic and common to trade and hence,
the same cannot be registered. To counter the aforesaid submission, the
b
counsel for the plaintiff has drawn attention of the Court to the trademark
applications filed on behalf of the defendants in respect of the trademark
„BURGER KING‟ and its formative device marks. He submits that in light
c of the aforesaid, the defendants are estopped from taking the ground of „non-
registrability‟.
27. In Indian Hotels (supra), following the judgment in Automatic
Electric Limited v. R.K. Dhawan, (1999) 91 PTC 81, the contention of the
d appellant of the trademark „JIVA‟ being descriptive and hence, non-
registerable, was rejected by the Court on the ground that the appellant itself
had applied for registration of the mark „JIVA‟ as a trademark and therefore,
it did not lie in the mouth of the appellant to say that the aforesaid mark was
e
a generic expression.
28. To the same effect is the finding of the Division Bench of this Court
in PEPS Industries (supra), wherein it was observed that when the
defendant has sought registration of the same mark as that of the plaintiff
f
(‘NO TURN’ in the said case), such a defendant is estopped from raising a
question on the validity of the said mark on the ground of it being
descriptive in nature.
g 29. In Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals
Ltd., 2022 SCC OnLine 4015, the contention of the plaintiff therein that the
mark „ZEST‟ was being used by various third parties and hence, the same is
a publici juris expression, was rejected by the Court on the ground that the
h plaintiff itself had sought and obtained registrations of the same mark and

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therefore, it does not lie in the mouth of the plaintiff to state that the word
„ZEST‟ is a publici juris or a generic expression.
30. A perusal of the trademark applications of the defendants shows that
b
the defendants have themselves sought for registration of the said marks and
therefore, in light of the dicta of the aforesaid judgments, the defendants are
estopped from taking a plea that the trademark BURGER KING is generic
c and common to trade. Therefore, reliance placed on behalf of the defendants

on National Bell (supra) is misplaced.
31. In my view, the defendants have failed to place any material in
support of their submission that the trademark „BURGER KING‟ is either
d generic or common to trade. It cannot be denied that the plaintiff has used
the trademark „BURGER KING‟ since 1954 and holds registrations for the
said mark in over 122 countries including India. The Division Bench of this
Court in M.A.C Personal Care Pvt. Ltd. & Anr. v. Laverana GMBH and
e
Co. K.G. & Anr., 2016 SCC OnLine Del 530, observed that the registrations
of the plaintiff in multiple jurisdictions create an even stronger presumption
that the plaintiff‟s trademark has reputation in the market. It was further
observed that if a trademark is registered in favour of the plaintiff in a
f
jurisdiction abroad, the said fact suggests that the mark of the plaintiff is
distinctive and hence, the same is capable of distinguishing the plaintiff‟s
trademark from those of other businesses.
g 32. In view of the discussion above, I am of the considered view that the
plea raised by the defendant with regard to the invalidity of registrations
granted in favour of the plaintiff in respect of the trademark BURGER
KING and other formative marks, is prima facie not tenable. There is no
h reasonable prospect of the defendants succeeding in the cancellation

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petitions filed by them. Therefore, no issue with regard to validity of the

registrations of trademarks of the plaintiff is liable to be framed in the facts
and circumstances of the present case.
b
33. List on 20th April, 2023.
I.A. 16492/2019 (u/s 151 of CPC) & I.A. 10536/2022 (seeking
Amendment of the WS)
34. List on 20th April, 2023.
c
d AMIT BANSAL, J.
MARCH 06, 2023
sr

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TM
This is a True Court Copy of the judgment as appearing on the Court website.
Publisher has only added the page para for convenience in referencing.
h
% Judgment delivered on: 03rd January, 2018
b + CS(OS) 709/2011
M/S THREE-N-PRODUCTS PVT. LTD. ..... Plaintiff
Versus
M/S KAIRALI EXPORTS AND ANR. ..... Defendants

c
Advocates who appeared in this case:
For the Appellant : Mr. Sharab Sriastava, Advocate.
For the Respondents : Mr. Manu T. Ramchandran, Advocate

for the defendant No. 1.
d
Ms. Poonam Atey with Mr. Birendra
Mishra, Advocates for defendant
No.2.
CORAM:-
HON’BLE MR. JUSTICE SANJEEV SACHDEVA
e
lA No.4708/2011 (under Order XXXIX Rules 1 & 2 CPC & lA
No.10589/2011 (under Order XXXIX Rule 4 CPC
1. The plaintiff has filed the subject Suit seeking inter alia the
f relief of permanent injunction for passing off, infringement of

trademark, rendition of account, etc. The plaintiff claims to be the
registered proprietor of the mark “AYUR” in various classes. It is
claimed that the predecessor of the plaintiff adopted the mark in the
g year 1984 and has used the same continuously and uninterruptedly.
The plaintiff also claims to hold a registration in respect of tissues,
(piece goods), bed and table cover, textile article not included in other
h IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 1 of 10

classes, in class 24 and in respect of clothing including boots, shoes

and slippers in class 25. The plaintiff also claims to hold registration
in several countries internationally of the trademark “AYUR”. In
b
these circumstances, the plaintiff claims to be the proprietor of the
mark “AYUR” having used the same continuously since 1984.
2. As per the plaintiff, defendant no. 1 adopted the mark

c
“AYURVASTRA” which is stated to be identical and similar to the
plaintiff‟s trademark “AYUR” in respect of clothes, sarees, dress
materials and fabrics, bed sheets and table covers, bleached clothes,
textiles and textile piece , readymade garments, clothing, footwear,
d
caps, headgear. As per the plaintiff, it became aware of the use of the
trademark “AYUR” by the defendants for the first time in October,
2009, when defendant no. 2 made an application seeking registration
e of the mark “AYURVASTRA”
3. The plaintiff thereafter claims to have issued a cease and desist

notice, consequent to which the defendant no. 2 is alleged to have
admitted their improper adoption and agreeing to discontinue the
f
mark “AYUR” and “AYURVASTRA”. Believing the representation
of the defendants to be correct, the plaintiff treated the matter as
closed, however, subsequently once again came across use of the
g mark “AYURVASTRA”; accordingly, instituted the present suit.
4. The plaintiff seeks permanent injunction against the defendants

on the ground that plaintiff is the prior adopter of the mark “AYUR”

in respect of its goods and services since the year 1984 and has
extensively and uninterruptedly used the same. Plaintiff has
substantial reputation and goodwill because of the use of the said
b
mark and has the exclusive right in respect of the mark “AYUR” and
its derivatives in respect of goods and services established in classes
24 and 25, the classes in which the defendants‟ goods fall. The
c plaintiff enjoys global reputation and goodwill and has made huge
sale and has substantial turnover and has substantially advertised the
mark “AYUR” through various media – prints as well as electronic,
besides making its goods available online through its website. It is
d contended that the adoption of the mark by the defendant is a
colourable invitation of the well-known trademark of the plaintiff, as
the same comprises of identical and deceptively similar word element
“AYUR”. The adoption of the mark by the defendants is malafide and
e
dishonest.
5. It is contended that the mark of the plaintiff „AYUR‟ is an

invented word and has no meaning whatsoever and is associated only
f with the goods of the plaintiff. The plaintiff relies on the decision of
this Court in the case of the plaintiff itself, i.e., M/s Three-N-Products
Pvt. Ltd. Vs. Yashwant & Ors. 95 (2002) DLT 271.
g 6. Defendant no. 1 in its written statement has contended that the

marks of the plaintiff as well as defendant are different. The plaintiff
has no exclusive right in the word “AYUR” per se as the word

“AYUR” is a word of very distinctive character and word “AYUR”

being an abbreviation of „AYURVEDA‟ signifies that the product is
of Ayurvedic qualities and in view of Section 17 of the Trademarks
b
Act, the plaintiff cannot obtain exclusive proprietary rights over the
word “AYUR”. It is contended that the plaintiff has failed to produce
any evidence of the use of the mark in respect of the goods in class 25
c in which the goods of the defendants fall.
7. Defendant no. 1 claims to be engaged in manufacturing and

selling eco-friendly organic handloom fabric, which is dyed using
Ayurvedic herbs. It is contended that the mark “AYURVASTRA” is a
d
composite mark comprising of the word „AYUR‟ derived from the
word „AYURVEDA‟ and the word „VASTRA‟ meaning clothes. It is
contended that the word “AYUR” per se is publici juris. Defendant
e no. 1 claims to be using the said mark with a unique logo, which is
capable of identifying its own independent source of identity. The said
defendants also claim to have spent substantial amounts on promotion
on its products under the trademark “AYURVASTRA”. Defendant
f no. 1 relied on the decision, in the case of the plaintiff itself, of the
Calcutta High Court in Three-N-Products Private Limited Vs. Emami
Limited dated 29.01.2010 in APO No. 248 of 2008 in CS No.
204/2007 to contend that the plaintiff cannot claim exclusive right to
g
the use of the word “AYUR” as the same is a generic word. Reliance
is also placed on the order of the Supreme Court dismissing the
Special Leave Petition against the said judgment.

8. Defendant no. 2 in its written statement has contended that

defendant no. 2 is neither a necessary nor a proper party to the suit.
Defendant no. 2 claims to be a society of weavers who make clothes
b
of different types of different agencies including private agencies as
well as Central Government and is engaged in the upliftment of the
handloom weavers community in Kerala. The handloom weavers have
c been calling their clothes “AYURVASTRA” since times immemorial

as they were doing herbal dying using Ayurvedic medicinal plants.
Defendant no. 2 contends that it had initially agreed to the cease and
desist notice of the plaintiff because of the pressure from the attorneys
d of the plaintiff and incorrect legal advice. It is denied that there is any
working partnership between defendant no. 1 and defendant no. 2
except few contract based job works.
e 9. Section 17 of the Trademarks Act, 1999 confers on the

proprietor of a mark exclusive right to use of the trademark taken as a
whole. Section 17(2) lays down that notwithstanding Section 17(1)
where a trademark contains any matter, which is common to trade or
f is otherwise of a non-distinctive character, the registration thereof
shall not confer any exclusive right in the matter forming only a part
or the whole of the trademark.
g 10. The plaintiff has based its suit primarily on the ground that the
trademark of the plaintiff is an invented word and has no other
meaning whatsoever. The entire basis of the claim of the plaintiff is

that it has invented the word “AYUR” and by extensive use of the
word “AYUR” and the association thereof with its goods since 1984,
the said mark has acquired distinctiveness and is identified with the
b
goods of the plaintiff alone.
11. The claim of the plaintiff ex-facie appears to be the incorrect.

The word “AYUR” finds mentioned in the Hindu Religious Texts i.e.
c
the Vedic Puranas, which has used the word “AYURVEDA”. The
word “AYUR” signifies healthy life and the word “VEDA” signifies
knowledge. The word “AYURVEDA” is a Sanskrit term comprising
of two words – „AYUR‟, which means life or vital power, and
d
„VEDA‟ – which means science or knowledge. The word
„AYURVEDA‟ signifies knowledge or science of life. The whole
basis of the claim of the plaintiff that word “AYUR” is invented by
e the plaintiff and adopted for the first time in 1984 is ex-facie
incorrect. The word “AYUR” has been used historically and is
derived from the Hindu Vedic Texts.
12. The protection of a trademark is dependent on whether the mark

f
adopted is generic, descriptive, suggestive, arbitrary or fanciful. The
marks, which are generic, descriptive or suggestive have lower level
of legal protectability and the marks, which are arbitrary or fanciful,
g have higher level of legal protectability. If a person adopts a mark,
which is generic or descriptive in nature, he runs the risk of the mark
having a lower level of legal protectability. In the present case,

plaintiff had adopted the word “AYUR” to describe its products. The
word “AYUR” as noticed above is a word derived from the Sanskrit
Religious Texts of the Vedic Puranas. The word “AYUR” is neither
b
an arbitrary nor a fanciful mark having a higher level of legal
protectability. The Plaintiff thus cannot prima facie claim any
proprietorship on the word „AYUR‟ per se.
c
13. The plaintiff having adopted a mark, which is generic or
descriptive, cannot claim legal protectability for the mere asking. It is
not that a generic or descriptive mark will never have any legal
protectability but the burden of proof on the person claiming
d
distinctness in favour of a generic or descriptive mark is much higher.
The plaintiff not only would have to show that the mark adopted by
the plaintiff, because of its extensive use has acquired distinctness and
e is identifiable only with the goods of the plaintiff but also that the
adoption of the mark by the defendants is identical and deceptively
similar to the mark of the plaintiff.
14. In the present case, the plaintiff is using the mark “AYUR” as
f
under:

whereas the defendants have used the mark “AYURVASTRA” as

under:
15. Since the plaintiff has adopted the word “AYUR”, it runs the
d
risk of lesser level of legal protectability. It is apparent from the mark
of the defendants that it is completely distinct and different from the
trademark of the plaintiff. The defendants used the mark
“AYURVASTRA” in a completely different style, design and getup
e
from that of the plaintiff. The defendants have also rendered an
explanation that their trademark “AYURVASTRA” is used on cloth,
for the manufacture of which herbal dying process is used, using
f Ayurvedic medicinal plants. The explanation of adoption of the mark
“AYURVASTRA” by the defendants is plausible and reasonable.
16. The decision in the case of Yashwant & Ors. (Supra) relied on
g
by the plaintiff does not help the case of the plaintiff, in as much as, in
the said case. The Court held that the trademark of the defendants was
an exact replica of the plaintiff‟s trademark, which could not be a

sheer coincidence. The Court held “assuming that AYUR is a common

dictionary word, its adoption by the defendants in exactly the same
style, design, getup as that of the plaintiff would prima facie indicate
b
that in doing so the defendants were motivated by the desire to cash
on the popularity, goodwill and reputation of the said trademark.” In
the present case as noticed above, style, design, getup trade dress of
c the defendants “AYURVASTRA” is not identical to that of the

Plaintiffs‟ but is different and distinct.
17. Prima facie I am of the view that the plaintiff has failed to
establish a prima facie case in their favour for grant of an ad-interim
d
injunction. The mere fact that plaintiff claims to be a prior adopter or
has substantial turnover and has spent substantial amount on the
development is of no consequence. The balance of convenience is not
e in favour of the plaintiff or in favour to the grant of an ad-interim
injunction.
18. The plaintiff has also failed to show that by use of the mark
“AYURVASTRA” by the defendant, the public is likely to get
f
deceived or likely to associate the products of the defendants with the
plaintiff.
19. In view of the above, the plaintiff is not entitled to grant of an

g
ad-interim injunction. Accordingly, the application being I.A.
No.4708/2011 (under Order XXXIX Rules 1 & 2 CPC) is dismissed
and I.A. No. 10589/2011 (under Order XXXIX Rule 4 CPC) is

allowed. The interim order dated 23.03.2011 is vacated.
CS(OS) 709/2011
b
List before the roster Bench for directions on 10.01.2018.
c SANJEEV SACHDEVA, J.
JANUARY 03, 2018
‘rs’
h
IA 4708/2011 & IA 10589/2011 in CS(OS) 709/2011 Page 10 of 10
TM
Publisher has only added the Page para for convenience in referencing.
h
MANU/IC/0034/2018
Equivalent/Neutral Citation: 2019(77)PTC 478(IPAB)
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD

MUMBAI
ORA/271/2015/TM/MUM and ORA/227/2015/TM/MUM
Nakshatra Distilleries & Breweries Ltd. Vs. Radico Khaitan Limited and Ors.
Manmohan Singh, Chairman and Sanjeev Kumar Chaswal, Member (T) (TM)
Counsels:
For Appellant/Petitioner/Plaintiff: H.W. Kane and Nikhil Sharma
For Respondents/Defendant: Sagar Chandra and Ishani Chandra
ORDER
Manmohan Singh, Chairman
1. The Applicant has filed the above two petitions seeking cancellation of registration of
the trade mark BRIHANS GOA labels bearing Registration Nos. 628446 and 629645,
both in class 33 (hereinafter collectively referred to as "the impugned registered trade
mark") and its removal from the Register of Trade Marks or in the alternative for
imposing a disclaimer condition on registration of the impugned registered trade mark
i.e., a condition that registration of the impugned registered trade mark shall give no
right to the exclusive use of the word GOA.
2 . For easy references, the 1st Respondent i.e. the registered proprietor of the
impugned registered trade mark, is hereinafter referred to as "the Respondent", while
the 2nd Respondent is hereinafter referred to as "the Registrar of Trade Marks".
3. The Applicant is in the business of manufacturing, distributing and selling alcoholic
beverages. In or about January/February, 2015, who made applications to the
Commissioner of State Excise, Maharashtra State for approval of its trade mark labels
containing inter-alia the word GOA.
3.1 The Respondent objected to the Applicant's said applications for approval of the
said trade mark labels on the ground that the registered proprietor is the owner of the
brand and label "GOA". Pursuant to the said objection the Commissioner of State
Excise, Maharashtra State appointed a hearing in the said matter on 23rd April, 2015.
Subsequently, vide his Order dated 28th April, 2015, the Commissioner of State Excise,
Maharashtra State rejected the Respondent's objection and granted approval to the
Applicant's trade mark labels.
3.2 Subsequently, the Respondent by its Advocates notice dated 2nd May, 2015 called
upon the Applicant to cease and desist from using the Applicant's trade mark labels
which were duly approved by the Commissioner of State Excise, Maharashtra State inter
alia on the ground that the Respondent is proprietor of inter alia of the impugned
registered trade mark.

3.3 Feeling illegal threats to the Applicant, the Applicant filed Civil Suit No. 2 of 2015
in the Court of District Judge Solapur at Solapur, inter alia seeking a declaration that
the threats given by the Respondent are illegal and for an injunction restraining the
Respondent from continuing to give such illegal threats. Pursuant to the application for
interim reliefs filed by the Applicant under Order 39 Rules 1 and 2 of C.P.C. in the said
Civil Suit No. 2 of 2015, the District Judge Solapur at Solapur was pleased to pass an
ex-parte order dated 16th May, 2015 granting ad-interim reliefs in favour of Applicant
and against the Respondent. By the said order the Dist. Judge directed that the parties
shall maintain status-quo as to the registered trade mark in question and non-inception
of legal action and threat for alleged infringement of trade mark of the Respondent.
3.4 In the meanwhile, the Respondent filed an Appeal from the said Order dated 16th
May, 2015 to the Hon'ble Bombay High Court wherein by consent of both the parties
said order of interim relief was modified vide order dated 23rd June, 2015 passed by
the Hon'ble Bombay High Court in which the Respondent was given liberty to take legal
action against the Applicant as per law, but before moving an application for ad-interim
relief, the Respondent was to give 48 hours clear notice to the Applicant.
3 . 5 Thereafter, the Respondent filed Civil Suit (OS) No. 1891 of 2015 against the
Applicant and one Waterfield Spirits Pvt. Ltd. before the Hon'ble Delhi High Court
seeking reliefs in terms of infringement of inter-alia its impugned registered trade mark
and passing off. The Respondent also filed an application for seeking ad-interim/interim
reliefs in the said suit. But no interim relief against the Applicant and the said Water
field Spirits Pvt. Ltd. was granted. Subsequently, the Applicant filed an Application
under Order VII Rule 11 for rejection of Plaint for want of territorial jurisdiction. Vide an
Order dated 28th March, 2017, the Hon'ble Delhi High Court allowed the said
Application under Order VII Rule 11 and rejected the Plaint for want of territorial
jurisdiction. The appeal was filed by the respondent No. 1 where the operation of the
order was stayed.
3.6 It is not in dispute that in view thereof, the Applicant was the person aggrieved and
hence on 27th June, 2015 filed the above rectification applications.
4. The impugned registered trade mark are label marks containing the word GOA which
is one of the feature of the label apart from other features subsisting on the label.
Representation of the impugned registered trade marks are reproduced hereinbelow:
5 . The Application states that the word GOA is not a coined or invented word but the
same is the name of a stage on the west coast of India. The word GOA is defined in the
New Oxford Dictionary of English (Clarendon Press Oxford, 1999) as follows:
"Goa: a state on the west coast of India; capital, Panaji. Formerly a Portuguese
territory, it was seized by India in 1961. It formed a Union Territory with
Daman and Diu until 1987, when it was made a state."

5.1 The Applicant case is that "Goa" is not just the name of any other Indian state GOA
is an extremely popular tourist destination not just amongst the Indians but also
amongst the travellers across the globe. Goa is well-known for its beaches, coconut
trees and sun. Both domestic and international travellers frequently visit GOA. Between
the year 1985 and March, 2015 more than 5 crore tourists arrived in GOA which speaks
volumes of popularity of GOA. GOA boasts of two world heritage sites viz. Bom Jesus
Basilica which contains the tomb of St. Francis Xavier and Churches and Convents of old
GOA. The international well-known magazine National Geographic Traveler" has placed
GOA as one of the top 99 costal destinations of the world. The very same magazine has
placed GOA amongst top 10 nightlife cities of the world. Another international well-
knows publication "Lonely Planet" has for the year 2014 chosen GOA to be the best
Indian Destination for Relaxation. For the year 2013 the said publication had honored
GOA with 'Best Value Destination'
5.2 The Applicant submits that the word GOA is not just a geographical name but is an
extremely famous tourist destination. The Application submits that in view of the above,
the word GOA is inherently incapable of distinguishing the goods/services of one trader
from those of other. The Applicant also submits that the said inherent incapability is
such that regardless of goods or services in relation to which the word GOA is used and
regardless of the duration for which it is used, the word GOA can never in law become
capable of distinguishing goods/services of one trader from those of others.
5.3. The Applicant states that consumption of alcoholic beverages in GOA is high. GOA
State Excise website shows that in the year 2011-2012, GOA Government earned Excise
duty of Rs. 18,234.43 lakhs. GOA has more than 50 distilleries. The Applicant has filed
extracts from website of GOA State Excise giving the details of the revenue, names and
address as of the distilleries in GOA and consumption of alcohol in GOA. As per 'Price of
Travel' website lists, GOA is one of the cheapest places for alcohol loving travelers.
5.4. Feni is a well-known local alcoholic beverage of GOA. It is made from cashew and
coconut. 'Feni is registered as a geographical indication under the Geographical
Indication of Goods (Registration and Protection) Act under No. 120 in Class 33 as of
19th December, 2007. The members of the trade and public connect GOA with its
locally brewed alcoholic beverage "Feni'. Goa is known for its alcoholic beverages.
5.5. Thus, "GOA"/impugned registered trademark is inherently unsuitable for being
registered as a trade mark. "GOA"/impugned registered trade mark cannot serve the
function of indicating to the members of the trade and the public origin of the
goods/services. It lacks inherent distinctiveness and inherent capacity to distinguish
one's goods from those of others. "GOA" is a purely geographical word in its ordinary
signification and no amount of user can overcome the said negative quality of the said
word/impugned registered trade mark. There is no sufficient distinguishing
characteristic in the impugned registered trade mark and therefore no distinctiveness
could be expected to result in respect of the impugned registered trade mark.
5.6. The registration of the impugned registered trade mark embarrasses and causes
inconvenience to other manufacturers and/or traders of alcoholic beverages, now and
would continue to do so in future. "GOA"/impugned registered trade mark must be kept
open to the trade and no monopoly in respect thereof can be conferred upon the
registered proprietor.
5.7. If alcoholic beverages not manufactured in GOA are sold under the impugned
registered trade mark then the impugned registered trade mark would mislead the

traders and consumers and would deceive them to believe that the goods bearing the
impugned registered trade mark originate from GOA. However, if the alcoholic
beverages manufactured in GOA are sold under the impugned registered trade mark
then it would describe to the traders and consumers that the goods in question are
manufactured in GOA. Therefore, it is prohibited from registration by granting exclusive
right to one party.
6 . It was stated that the impugned registered trade mark was registered subject to
association with trade mark No. 333903. The registered proprietor claims to be
Assignee of the impugned registered trade mark by virtue of Deed of Assignment dated
5th October, 2005. However, the trade mark No. 333903 was not assigned to the
registered proprietor vide the said Deed of Assignment dated 5th October, 2005. There
is no effective, valid and legal transfer of the impugned registered trade mark by its
erstwhile owner to and in favour of the registered proprietor. The Registrar of Trade
Marks should not have entered the name of the registered proprietor as the subsequent
proprietor of the impugned registered trade mark.
7 . The Applicant says that there is no other meaning, definition or connotation of the
word GOA, save and except the name of State on the west coast of India. The Applicant
submits that the word GOA is undoubtedly a geographical name.
8 . The impugned registered trade mark contains the name of one of the Indian States
"GOA" as its leading, essential, prominent and memorable feature. A cursory look at the
impugned registered trade mark shows that "GOA" is the only prominent and
memorable feature of the impugned registered trade mark and all other features of the
impugned registered trade mark indicate or designate some characteristics of the goods
for which the impugned registered trade mark has been registered.
8.1. GOA, the only prominent and memorable part of the impugned registered trade
mark, is the name of one of the States of India (formerly Union territory of India). It is
popular for its beaches, coconut trees and sun and attract large number of domestic and
international tourists. It is one of the most popular State of India.
GOA has large number of manufactures of alcoholic beverages, wines, liquors etc.
GOA's locally manufactured alcoholic beverage known as "FENI" is well-known and
popular. The per capita consumption of alcoholic beverages in GOA is quite high. GOA
and Alcoholic beverages therefore go together.
The impugned trade mark and essential, leading, prominent and memorable part thereof
viz. GOA lacks positive quality of distinguishing one's goods (goods of the Registered
Proprietor) from those of others. In fact it has a negative quality of indicating that the
goods bearing the impugned registered trade mark are manufactured in GOA.
8.2. The impugned registered trade mark containing GOA as its leading, essential,
prominent and memorable feature cannot be allowed to be monopolized by the
impugned registered trade mark. The impugned registered trade mark and especially the
word GOA contained therein can only designate a Section of the country or the State of
India and is incapable of indicating to the members of the trade and public, origin of
goods.
8.3 The impugned registered trade mark and especially the word GOA contained therein
is not such as it would never occur to any other trader in such goods to use, especially
since it is a very popular tourist State with high consumption of alcoholic beverages and
large number of manufacturers of alcoholic beverages are located in the State of Goa.

The impugned registered trade mark and especially GOA contained there in will always
be used and understood in its geographical signification and can never become
distinctive of the goods of the registered proprietor.
8.4 The registered proprietor is not entitled to a monopoly over the word GOA, which is
the name of the popular State of India and the registered proprietor cannot claim
monopoly in GOA by claiming registration of the impugned registered trademark
especially since Goa is the seat of manufacture of alcoholic beverages.
9. The applicant submits that in the facts and circumstances of the case, the registration
of the impugned registered trade mark should be cancelled and an entry relating thereto
should be removed from the Register. In any event of the matter, alternatively, since
GOA is the name of the popular State of India, assuming while disputing the registered
proprietor's claim of registrability of the impugned registered trade mark as a whole, it
is necessary to impose a condition of disclaimer i.e. a condition that by virtue of
registration of the registered trade mark, the registered proprietor would not claim
exclusive right to the use of the word GOA.
Case of the Respondent No. 1 as per counter-statement
10. The respondent No. 1 has filed the counter statement in both petitions wherein it
was stated that the applicant has in a mala fide manner and with a dishonest intention
copied the Registered Trade Mark of the Respondent No. 1 for an identical product i.e.
alcoholic. beverages, and is using the same without any regard to the letter and spirit of
the law. The mala fides of the Applicant is also evident from the fact that The Applicant
is promoting their alcoholic beverages bearing the mark 'GOA' as 'ORIGINAL GOA'
despite being fully aware of the fact that the Respondent No. 1 is the prior user of the
mark 'GOA'. The Applicant has no have provided no explanation as to why it has
adopted the mark 'GOA' and 'G04' for alcoholic beverages.
10.1 It is submitted that the Applicant cannot be allowed to Approbate and Reprobate
at the same time. It is submitted that the Applicant have entered into a trade mark user
Agreement with an entity called Water field Spirits Pvt. Ltd. and have recognized the
proprietary rights in the label comprising the word 'GOA'. The said entity has also
applied for trade mark registration of a label comprising the word 'GOA' bearing
application No. 1934928. Thus, when the Applicant themselves applied have recognized
rights in label comprising the word 'GOA', therefore, there is mala fide on their part to
contend that the mark 'GOA' is descriptive/generic.
It is stated by the respondent No. 1 that the registrations of the registered Trademark
No. 629645 and 628446 in Class 33 are valid and their entry in the register is made
with a sufficient cause.
Counter-statement
11. It is stated by the Respondent No. 1 that it which was formerly known as Rampur
Distillery was established in the year 1943. In the year 1999, the Respondent launched
its brands under the house mark/trademark RADTCO which was met with phenomenal
success. Some of the well-known trademarks of the Respondent No. 1 are 8 PM, 8 PM
BERMUDA RUM, CONTESSA, OLD ADMIRAL, GOA etc.
11.1. The Respondent No. 1 also has 14 state-of-the-art bottling lines, with a few
imported from Italy. It is also equipped with tunnel bottle washing, filling, sealing and
labeling machines having capacity of producing 1500 cases of liquor in a single shift of

operation. To keep pace with the growing demand, the Respondent No. 1 has
significantly increased its bottling capacity by both acquiring and setting up bottling
plants in the states. of Rajasthan, Uttaranchal and Andhra Pradesh.
11.2. The Respondent No. I also has four millionaire brands - 8 PM Whisky, Contessa
Rum, Old Admiral Brandy and Magic Moments Vodka, selling more than a million cases
per annum. The Respondent No. 1 has a strong presence in the CSD market, serving the
Indian Armed Forces. The Respondent No. 1 also sells rectified spirits in bulk liquid
form to other Indian Made Foreign Liquor (IMFL) manufacturers in India and overseas.
The Respondent No. I thus has brands that attract consumers of every market segment
both in terms of purchasing power and preference.
11.3. One of such brands of Respondent No. 1 is called "GOA". In the year 2005, the
Respondent No. I entered into an assignment deed dated 5th October, 2005 with Brihan
Maharashtra Sugar Syndicate Limited and that assignment deed inter alia, acquired the
trademark Brihan's "GOA" (Label), 'GOA" Special Dry Gin (Label) as well as "GOA" Dry
Gin and Lime .35 UP in Class 33 for alcoholic beverages along with its goodwill. The
registered trade mark "GOA" Special Dry Gin (Label) is the subject matter of the present
petition. By virtue of the said assignment deed the Respondent No. I became the
proprietor of the trademark "GOA" Special Dry Gin (Label) in respect of Alcoholic
Beverages, whose essential and prominent feature is the mark 'GOA'. The Respondent
No. 1 has also applied for registration of the trademark 'GOA' word per se. in Class 33
for Gin. Therefore, the Respondent No. 1 can claim exclusive rights on the use of the
word mark "GOA" in terms of Section 17 of the Trade Marks Act, 1999. Further, the
trademark "GOA" being an arbitrary mark for alcoholic beverages merits the highest
degree of protection under the Trademarks Act, 1999.
11.4. The impugned mark and the word "GOA" were first adopted by the Respondent
No. 1's predecessor in interest at least in the year 1994 and was used by them
continuously and uninterruptedly till the mark was assigned to the Respondent No. 1 in
2005. Thereafter, the Respondent No. 1 has used the essential feature of the said label,
i.e. "GOA" in respect of alcoholic beverages, continuously since then and has been
using the said mark uninterruptedly till date. Although advertisement of alcoholic
beverages is not allowed the Respondent No. 1 has also independently and through its
predecessor in interest promoted their alcoholic beverages particularly Gin under the
mark "GOA" throughout the country. Products bearing the trademark "GOA" have met
with unprecedented success due to excellent product activity, superior packaging and
high recall promotion activities and is currently one of the fastest growing products in
the Respondent No. 1's portfolio. This is evident from the volume of cases and sales
figures or the products sold under the trademark "GOA" as tabulated below:

Therefore by virtue of such long, continuous and uninterrupted use, excellent quality
and extensive promotion the trademark "GOA" has come to be associated exclusively
with the Respondent No. 1 in respect of alcoholic beverages. Therefore, the Respondent
No. 1 has common law rights, over and above the statutory rights, in the trade mark
"GOA":
12. It is averred that the trademark "GOA" has thus come to be inexorably linked to the
products of the Respondent No. 1 through prior registration being an essential feature
of the Respondent No. 1's registered trademark and prior adoption in the year 1994,
continuous user since then and the wide spread promotion and publicity. Consumers
associate goods bearing the trademark "GOA" exclusively with those of the Respondent
No. 1.
Therefore any use by any third party of the said trademark 'GOA' or any other
deceptively similar mark would constitute infringement of the Respondent No. 1's
statutory rights as well as passing off. Further the Respondent No. 1 is' very vigilant
about protecting its Intellectual Property and particularly in respect of the mark "GOA"
and therefore regularly investigates the markets of India to find any infringing entities
selling or manufacturing their products under the said names. The Respondent No. 1
has instituted multiple legal proceedings to protect its mark 'GOA'. The details of the
same are as follows:
• Radico Khaitan Ltd. v. Vishnu Laxmi Co-Operative Grape Distilleries Ltd.;
CS(OS) No. 2925 of 2011 before the Hon'ble High Court of Delhi at New Delhi;
• Radico Khaitan Ltd. v. Master Blenders Pvt. Ltd.; CS(OS) No. 957 of 2012
before the Hon'ble High Court of Delhi at New Delhi;
• Radico Khaitan Ltd. v. M/s. Brima Sagar Maharashtra Distilleries Ltd. CS(OS)

No. 1572 of 2013 before the Hon'ble High Court of Delhi at New Delhi.
• Radico Khaitan Ltd. v. Delta Distilleries Pvt. Ltd.; CS(OS) No. (sic) 2014
before the Hon'ble High Court of Delhi at New Delhi;
• Radico Khaitan Ltd. v. Pradip Dunichand Kalani & Ors.; Cont.CAS(C) No. 641
of 2015 before Ltd. v. Nakshatra Distilleries & Breweries Ltd.; CS(OS) No. 1891
of 2015 before the Hon'ble High Court of Delhi at New Delhi.
It is submitted that in Radico Khaitan Ltd. v. Vishnu Laxmi Co-Operative Grape
Distilleries Ltd.; CS(OS) No. 2925 of 2011, the Respondent No. 1 had obtained an ex-
parte order against the Defendant, which was later confirmed by the Hon'ble High Court
of Delhi. The said case is pending and is at the stage of trial. In, Radico Khaitan Ltd. v.
Master Blenders Pvt. Ltd. and Deejay Distilleries Pvt. Ltd.; CS(OS) No. 957 of 2012 the
Respondent No. 1 entered into a mediation agreement with the Defendants whereby
they acknowledged the right of the respondent No. 1 in the trade mark "GOA" and
undertook not to use the trade mark 'GOA' in future. It is stated' that the said suit has
been decreed in terms of the said undertaking. In, Radico Khaitan Ltd. v. Delta
Distilleries Pvt. Ltd.; CS(OS) No. 2757 of 2014. the Defendants also undertook not to
use the trade mark 'GOA' in future. The said suit has also been decreed in terms of the
said undertaking.
12.1. In Radico Khaitan Ltd. v. M/s. Brima Sagar Maharashtra Distilleries Ltd.; CS(OS)
No. 1572 of 2013. The said matter has been settled and Brima Sagar Maharashtra
Distilleries Ltd. have undertaken not to use the word 'GOA' after 30th September, 2015.
The Defendant in those proceedings has acknowledged the rights of the Respondent No.
1 in the mark GOA and has undertaken not to use the mark GOA in any manner and the
suit has been decreed. In Radico Khaitan Ltd. v. Brima Sagar Maharashtra Distilleries
Ltd.; CS(OS) No. 1572 of 2013 Delhi High Court had passed an interim order dated
15th October, 2014 wherein it was observed "the word 'GOA' per se may not be capable
of protection as a trademark". In this regard, it is submitted that the Hon'ble Division
Bench of the Delhi High Court declared the said observation would not be binding on
the Respondent No. 1 for the reason that it is not a determinative finding of law vide its
order dated 13th January, 2016.
12.2. In Radico Khaitan Ltd. v. Pradip Dunichand Kalani & Ors. vide interim order dated
17th August, 2015; the Respondents therein have been restrained from using adopting,
operating, marketing, offering for sale, advertising or in any manner dealing with the
trademarks of the Respondent No. 1 including the mark "GOA", "GOA LABEL" and/or
any other mark which is identical or deceptively similar thereto including but not limited
to the "G & A" Label arid the "GOVA" Label. The said interim order continues till date. It
is submitted that in all the ex-parte orders or consent decree, settlement etc. the
Respondent No. 1 has been able to secure rights in, the word' GOA' per se.
12.3. Radico Khaitan Ltd. v. Nakshatra Distilleries & Breweries Ltd.; CS (OS) No. 1891
of 2015 before the Hon'ble High Court of Delhi at New Delhi has been filed against the
Applicant seeking to restrain the Applicant from using the mark 'GOA' for alcoholic
beverages and Other incidental reliefs, The said. suit is pending before the Hon'ble High
Court of Delhi.
12.4. The Respondent No. 1 has also taken actions against entities which have filed
applications for similar marks comprising the word 'GOA'. The details of the same are as
follows:

Other than the above, the Respondent No. 1 has also filed applications under Form TM-
58 of the Trade Marks Act, 1999 seeking to have information of particulars of
advertisement of a mark bearing the word 'GOA' in Classes 32 and 33.
13. In nut-shell, it is stated that on the basis of the above, it is submitted that the mark
'GOA' has come to be associated with the Respondent No. 1 and the present petition of
the Applicant is liable to he dismissed as the Applicant is a dishonest adopter of the
mark 'GOA', of which the Respondent No. 1 is a prior registrant and user for alcoholic
beverages.
The' registration of the registered trade mark was made in compliance of the provisions
of the Trade Marks Act and in particular the provisions contained in Sections 9, 11 and
18 of the Act and even today the registration of the said trademark Continues to be
consistent with the provision of the Trade marks Act, 1999.
14. It is submitted that it is a well settled principle of law that a mark is capable of
being protected as a trade mark despite being a geographical word if the use is arbitrary
to the goods in question. Without prejudice to the above it is further submitted that a
geographical mark can acquire trademark significance upon acquiring secondary
meaning. It is submitted that the mark 'GOA' is completely arbitrary to the goods in
question and is therefore a trademark requiring the highest degree of protection. The
trademark 'GOA' of the Respondent No. 1 has acquired immense goodwill and
reputation in the market due to continuous and uninterrupted sales of its product for
around 22 years, the great quality of the product, substantial sales and availability in
most parts of India giving the mark an extensive geographical reach. Further the
Respondent No. 1 is extremely active in protecting its mark and has successfully taken
actions and obtained injunctions against several third parties misusing the mark.
15. The Respondent No. 1 submits that Feni is registered as a geographical indication
under the Geographical Indication of Goods (Registration and Protection) Act, 1999. It
is submitted that a Geographical Indication is different from a Geographical Trade Mark.
It is submitted that the contentions raised herein are a desperate attempt by the
Applicant to confuse this Hon'ble Tribunal. A Geographical Indication is an indication
towards the effect that the product to which it is applied is produced at a particular
"region and because of that production and development at that particular region the
product is distinguishable from other products, The advantage of the same is for a class
of manufacturers who manufacture that product in that area! On the other hand, a
geographical trade-Mark is a trade mark which may have an original geographical
significance however is applied to products in an arbitrary manner or has acquired a
distinct secondary meaning. It is for this reason, GOA cannot be a trade mark for 'Feni'
as there is a bar under Section 9(1)(b) of the Trade Marks Act. 1999 for places
indicating geographical origin. What has to be seen is whether the trademark is the
name of the place from which the goods actually come and whether the place or region
named is noted for these particular goods for the bar in Section 9(1)(b) to operate. 'Gin
is not associated with Goa and Goa is famous for 'Feni' and not 'Gin'. In the present

case. 'GOA' has nothing to do with 'Gin'. Therefore, the mark of the Respondent No. 1 is
an arbitrary trade mark. Therefore, the contentions of the Applicant in the paragraph
under reply wrong and denied. It is vehemently denied that 'GOA' is known for its
alcoholic beverages.
1 6 . It is denied that in the aforesaid facts and circumstances, 'GOA'/impugned
registered trade mark is inherently unsuitable for being registered as a trade mark. It is
submitted that the Applicant has raised untenable grounds which are devoid of any
merit and are a desperate attempt by the Applicant to skirt the issue at hand. It is
denied that 'GOA' the impugned registered mark cannot serve the function of indicating
to the members of the trade and the public origin of the goods/services. It is denied
that the mark 'GOA' lacks inherent distinctiveness and inherent capacity to distinguish
one's goods' from those of others. It is submitted that a mark has to be tested in
relation to the goods in question. It is a well settled principle of law that geographical
trademarks if used in an arbitrary manner are inherently distinctive and even if a
geographical term is descriptive it is capable of protection as a trademark on acquiring
secondary meaning. In the present case, Respondent No. 1's 'mark 'GOA' is being used
in an arbitrary sense for Gin. Therefore, an arbitrary use of a geographical mark makes
the mark inherently distinctive. Without prejudice to the said contention, it is submitted
that due to a continuous, prior and extensive use of the mark 'GOA' for more than two
decades, the mark 'GOA' has come to be associated with the Respondent No. 1.
Therefore, the contentions of the Applicant as to the lack of distinctiveness of the mark
of the Respondent No. 1 is neither tenable in law or in fact. Therefore, the Contention of
the Applicant that no amount of user can overcome the said negative quality of the said
word/impugned registered trade is wrong and vehemently denied. It is vehemently
denied that there is no sufficiently distinguishing characteristic in the impugned
registered trade mark and therefore no distinctiveness could be expected to result in
respect of the impugned registered trade mark.
1 7 . It is denied that, the registration of the impugned registered trade mark
embarrasses and causes inconvenience to other manufacturers and/or traders of
alcoholic beverages, now and would continue to do so in future. It is submitted that the
Applicant has no meritorious contentions in facts and in law and are raising
unreasonable and untenable arguments. It is stated that no grievance would be caused
to any manufacturer who honestly wants to practice his trade by registration of the
Respondent No. 1's trademark. It is only, the parties such as the Applicant who want to
trade upon the reputation and goodwill of the Respondent No. 1's mark would be
inconvenienced by the said registration as tie prevailing registration prohibits them from
using the mark 'GOA'. It is submitted that there are multiple marks available for
adoption and there is no honest reason why the Applicant has adopted the mark 'GOA'.
However, the Applicant intentionally chose to capitalise on the brand value of the
Respondent No. 1's mark. It is vehemently denied that the 'GOA'/impugned registered
trade mark must be kept open to the trade and no monopoly in respect thereof can be
conferred upon the registered proprietor.
18. It is submitted by the respondent No. 1 that neither the Respondent No. 1, nor the
Applicant manufactures its products in Goa. None of the contesting parties in the
present case has connection with Goa. Therefore, the question and assumption that the
alcoholic beverage will be manufactured by Respondent No. 1 in GOA is highly
untenable. It is submitted that the parties are using the mark GOA in a purely trademark
sense and not as a geographical descriptor. Additionally, GOA is not known for Gin,
therefore it is very unlikely for consumers to associate the mark in a geographical
sense. In light of the same it is submitted that the impugned registered trade mark will

never describe to the traders and consumers that the goods in question are
manufactured in GOA. Thus, the contention of the Applicant that the impugned
registered trade mark would describe to the consumers that the goods in question are
manufactured in GOA is untenable and therefore denied. Secondly, just because a mark
is a word of geographical nature and has been applied to a particular product in an
arbitrary sense, it cannot be assumed that the traders and consumers would be deceived
to believe that the Goods originate from that place. It is a well settled principle of law
that if the place or region is not noted for the particular goods in question then the
mark is an arbitrary mark. It is clear that the contentions of the Applicant are merely a
figment of its imagination. The Applicant is raising untenable contentions having no
credence in fact or in law. Thus, it is denied that the impugned registered trade mark is
prohibited from registration for any reason. Without prejudice to the above, it is
submitted that it is the Applicant's own case that use of 'GOA' for products not made in
GOA will mislead the traders and consumers that the goods originate from 'GOA'. In this
regard, it is submitted that the Applicant cannot be allowed to approbate and reprobate
at the same time. Without prejudice to the above, it is humbly submitted that the
trademark GOA of the Respondent No. 1 has acquired a secondary meaning for Gin due
to continuous and uninterrupted sales of its product for more than 22 years, the great
quality of the product, substantial sales and availability in most parts of India giving the
mark an extensive geographical reach.
19. It is submitted that the records of the Trademark Registry wrongly reflect that the
Respondent No. 1's registered trademark is Associated with trademark No. 333903,
which number does not exist on the trademarks register. However, this fact does not
make the Assignment of the mark invalid as it is clearly an error of the Registry.
Further, as per Clause 1.1 of the Agreement the entire right title and interest in the
trademarks GOA including common law rights in the said mark were assigned to the
Respondent No. 1, therefore, this fact is irrelevant to the facts of the present case. It is
denied that there is no effective, valid and legal transfer of the impugned registered
trade mark by its erstwhile owner to and in favour of the Respondent No. 1.
20. It is denied by the Respondent No. 1 that it has not used the registered mark as
whole and in its form as registered, especially during a period of 5 years and 3 months
prior to the date hereof. It is denied that the registration of the impugned registered
trade mark is liable to be cancelled under Section 47 of the Act for any reason. It is
denied that the Respondent No. 1 did not have and does not have a bona fide intention
to use the impugned registered trade mark. It is submitted that the Respondent No. 1
has been continuously and uninterruptedly using the essential and prominent features of
its registered trademark at least since 1994 through its predecessor in interest and since
2005 directly. It is also denied that the Applicant is entitled to the reliefs sought in the
present application.
Applicant's Response to the Counter statement
21. The applicant has filed the affidavit of Mr. Suresh Ramhari Margar in Reply to the
counter statement on 23/08/2017 along with Annexure A-1 to D.
22. With reference to Respondent No. 1's contention, Applicant has entered into a user
agreement with Water Filed Spirits Pvt. Ltd. and has recognized proprietary rights in the
label comprising the word "GOA", it was submitted that Respondent No. 1 is trying to
mislead this Tribunal. It is submitted that a cursory look at the said label reveals that
the word "LEMONCE" and the device of bird are the leading, essential and prominent
features of the said label and the word "GOA" has been used in smaller font and in a

descriptive sense. With reference to Respondent No. 1's contention that the said Water
Field Spirits Pvt. Ltd. has filed an application for registration of the trade mark label
containing the word "GOA" under No. 1934928, It is submitted that Respondent No. 1
has conveniently failed to disclose material facts pertaining to the said Application. It is
submitted that in particular the Respondent No. 1 failed to mention that in its reply to
examination report dated 16th August, 2012, the said Waterfield Spirits Pvt. Ltd. had
stated that "In view of the geographical significance of the word "GOA" Applicants are
agreeable to the condition that they shall have no right to the exclusive use of the word,
except as substantially shown in the form of the application." Pursuant thereto, the
trade mark under the said application was advertised in the Trade Marks Journal No.
1595 dated 1st July, 2013 at Page 1156 with a disclaimer that registration of the trade
mark shall give no right to the exclusive use of the word GOA.
23. With reference to paragraph 5 of Preliminary Objections of the Counter-Statement,
it was denied by the applicant that the present petition is liable to be dismissed or that
the same is filed in disregard of the alleged principle of protection of geographical trade
marks as alleged. It is submitted that it is a settled principle of trade marks law that the
trade marks which designate the geographical origin of the goods are not registrable. It
was stated that geographical trade mark when applied arbitrarily to any goods or
services, the same merits any protection much less highest degree of protection as
alleged or at all. It is submitted that in any event, the word GOA in the impugned trade
mark has not been used in arbitrary or fanciful way to indicate its ownership but is used
in geographical sense to falsely denote the place of origin of the impugned goods and
to cash on the reputation of the word GOA vis-a-vis alcoholic beverages. It is submitted
that the state of GOA has a reputation of manufacturers/sellers/consumers of alcoholic
beverages including Gin. It is submitted that the word GOA is not of such nature that
the same would never occur to any other trader dealing in similar goods. It was also
denied that the Respondent No. 1's trade mark has acquired secondary meaning or is
associated much less solely or exclusively with Respondent No. 1 for alcoholic
beverages as alleged or at all. It was submitted that the word GOA per se can never
acquire distinctiveness or secondary meaning, especially in relation to alcoholic
beverages including Gin.
24. The applicant has denied all other averments made in the counter statement as well
the sale figures, goodwill and reputation of the mark and title documents claimed by the
respondent No. 1.
25. It is submitted by the applicant that Respondent No. 1 cannot be the proprietor of
the impugned trade mark containing the word GOA as its leading, essential and
memorable feature. It was not admitted by the applicant that Respondent No. 1 entered
into an assignment deed with Brihan Maharashtra Sugar Syndicate Limited much less in
the year 2005 or that vide the alleged assignment deed Respondent No. 1 acquired the
trade mark "Brihan's GOA (Label)", "GOA" Special Dry Gin (label) or "GOA" Dry Gin and
Lime 35 UP much less with goodwill as alleged or at all. It is denied that Respondent
No. 1 became proprietor of the impugned trade mark much less by virtue of the alleged
assignment deed as alleged or at all. It is submitted that when the alleged Brihan
Maharashtra Sugar Syndicate Limited was itself not the proprietor of the impugned trade
mark, the same could never have been assigned to Respondent No. 1. It is submitted
that after the date of the alleged assignment, on or about 4th December, 2008,
Respondent No. 1's alleged predecessor in title Brihan Maharashtra Sugar Syndicate
Limited applied for registration of a trade mark label containing the word GOA as its
leading, essential and memorable feature under Application No. 1759818 in class 33 in
relation to all alcoholic beverages including vodka, gin, brandy, wines, spirits and

liquors included in class 33, fruit extract with alcohol not included in class 33. (subject
to variation condition). It is submitted that the same demonstrates that the assignment,
if any, was in respect of individual labels and not in relation to the word GOA, since the
same can never be a subject matter of assignment. It is not admitted that Respondent
No. 1 has applied for registration of the trade mark GOA word per se in class 33 as
alleged. It is denied that Respondent No. 1 can claim exclusive rights on the use of the
impugned trade mark much less in terms of Section 17 of the Trade Marks Act, 1999 as
alleged or at all. It is submitted that the word "GOA", forming one of the leading,
essential and memorable features of the impugned trade mark, is common to the trade
and is of a non-distinctive character. It is submitted that the word GOA is inherently
incapable of registration. It is submitted that Respondent No. 1 cannot claim monopoly
over the expression "GOA" much less by virtue of Section 17 of the Trade Marks Act,
1999. It is denied that the impugned trade mark is arbitrary for alcoholic beverages or
that the same merits any protection much less highest degree of protection under the
Trade Marks Act, 1999 as alleged. It is submitted that on the contrary, the impugned
trade mark denotes the State of GOA which is famous for alcoholic beverages.
26. In reply, the respondent No. 1 has filed the following documents in order to prove
that the secondary meaning had been acquired by respondent No. 1's trade mark GOA.
• The use of the trade mark GOA by the Respondent No. 1 through its
predecessor since 1994 and independently by itself since 2005.
• The gross sales and net sales from the year 2009-10 to 2014-15 i.e. Rs.
134.93 Crores and Rs. 25.43 Crones, respectively, of the products sold by the
Respondent No. 1 under the trade mark GOA.
• The volumes in cases from the year 2009-10 to 2014-15 i.e. a total of
5,14,170 cases of the products sold by the Respondent No. 1 under the trade
mark GOA.
• The Respondent No. 1 through its predecessor in interest has promoted its
brand/trade mark GOA by legitimate channels of advertisement.
• The multiple legal proceedings instituted by the Respondent No. I against
third parties in order to protect its mark 'GOA'. It is pertinent to note that the
Respondent No. 1 has also received several favourable orders for the same.
The Respondent No. 1 has filed several oppositions against the adoption of marks which
are identical or deceptively similar to their trade mark GOA. As an abundant caution, the
Respondent No. 1 has also filed the Form TM-58 under the Trade Marks Act, 1999 in
several identical/similar marks seeking to have information of particulars of
advertisement of such marks bearing the word 'GOA' in classes 32 and 33.
27. It is stated that the present petitions are nothing but a counter blast to the legal
notice.
28. Arguments of the Respondents
CHANGE IN LAW
The primary evolution of law with respect to geographical marks in India came into
being through the change in the relevant provisions under the Indian Trade Marks Laws.
The provision for registrability of geographical marks under the Section 9(1)(h) of the

present Trade Marks Act, 1999 has advanced from the earlier provision of Section 9(1)
(d) of the Trade and Merchandise Marks Act, 1958. It is pertinent to note that Section
9(1)(d) of the Trade and Merchandise Marks Act, 1958 was on the lines of UK Trade
Marks Act, 1938 and Section 9(1)(b) of the present Trade Marks Act, 1999 is on die
lines of UK Trade Marks Act, 1994. The corresponding provisions of the both the old law
and new law in UK and India are mentioned herein below:-
UK Trade Marks Act,UK Trade Marks Act,
1938 (Old Law) 1994 (Current Law)
Section 9: Section 3: Absolute
Distinctiveness grounds for refusal of
requisite for registration.
registration in Part A
(1) The following shall
(1) In order for a trade not be registered
mark (other than a
certification trade (a)......
mark) to be registrable
in Part A of the (b)......
registrar, it must (c) Trade marks which
contain or consist of at consist exclusively of
least one of the signs or indications
following essential which may serve, in
particulars:- trade, to designate the
(a)...... kind, quality, quantity,
intended purpose, value,
(b)...... geographical origin, the
time of production of
(c)...... goods or of rendering of
services, or other
(d) a word of words characteristics of goods
h a v i n g no direct or services. Provided
reference to the that, a trade mark shall
character or quality of n o t be refused
the goods, and not registration by virtue of
bei ng according to its paragraph (b), (c) or (d)
ordinary signification a above if, before the date
geographical name or a of application for
surname. registration, it has in
fact acquired a
(e) any other distinctive character as a
distinctive mark, but a result of the use made
name, signature, or of it.
word or words, other
than such as fall within
the descriptions in the
foregoing paragraphs
(a), (b), (c) and (d),
shall not be registrable
under the provisions of
this paragraph except
upon evidence of its

distinctiveness.
Trade Marks and Trade Marks Act, 1999
Merchandise Marks Act,(Current Law)
1958 (Old Law)
Section 9: Requisites Section 9: Absolute
f o r registration in Part grounds for refusal of
A and B of theregistration.
Registrar.
(1) The trade marks
(1) A trade mark shall
n o t be registered in (a).....
Part A of the register
unless it contains or (b) which consist
consists of at least one exclusively of marks or
of the following indications which may
essential particulars, serve in trade to
namely:- designate the kind,
quality, quantity,
(a)....... intended purpose,
values, geographical
(b)....... origin or the time of
production of the goods
(c)....... or of rendering of
service or other
(d) one or more words characteristics of the
having no direct goods or services; Shall
reference to the not be registered
character or quality of
the goods and not Provided that, a trade
being, according to its mark shall not be
ordinary signification, a refused registration if,
geographical name or a before the date of
surname or a personal application for
name or any common registration it has
abbreviation thereof or acquired a distinctive
the name of a sect, character as a result of
caste or tribe in India. the use made of it or is
a well-known trade
(e)....... mark.
(2) A name, signature
o r word, other than
such as fall within the
descriptions in clauses
(a), (b), (c) and (d) of
sub-section (1) shall
not be registrable in
Part-A of the register
except upon evidence
of its distinctiveness.
29. It is submitted by the respondent No. 1 that the Section 9 of the Trade Marks Act,
1999 and Trade and Merchandise Marks Act. 1958:-

a) Under Section 9(1)(b) of the trade Marks Act, 1999 which is akin to the UK
Trade Marks Act. 1994, the words 'geographical name' have been replaced by
the term 'geographical origin' Therefore, the grounds for refusal that existed
under the Old Law which provided a blanket refusal for a geographical name
except upon evidence of distinction has been changed under the new law,
which related and refers to the geographical origin and not the geographical
name. This means that a geographical name can be registered and does not fall
foul of Section 9 as long as the goods and service associated with the said
geographical name are arbitrary and to not indicating a source of the origin for
the same.
b) Further it is respectfully submitted that due to this change in law, Section
9(1)(a) has also been qualified to indicate that a mark may lie devoid of
distinctive character to mean that the same is not capable of distinguishing the
goods and services of one person from those of another. This means that a
geographical name can be registered and does not fall foul of Section 9(1)(a)
of 1999 Act also if it is applied for goods and services that are arbitrary in
nature and thus, are capable of distinguishing the said goods and services of
one person from that of another.
c) The current statutory regime applicable in India under the Trade Marks Act,
1999 (hereinafter referred to as "1999 Act") has evolved over the older regime
under Trade and Merchandise Marks Act, 1958' (hereinafter referred to as "1958
Act") in respect of geographical name. The provision of Section 9(i)(d) under
the 1958 Act, bars registration to geographical name as a whole whereas
Section 9(1)(b) under the 1999 Act bars registration to marks which indicate
the geographical origin of the goods/services. Under the 1958 Act, a
registration of a geographical name was barred, however, under the
current/1999 Act the registration of a geographical mark is only barred when
the geographical place is the place of origin of the goods/services. Therefore,
there is a clear departure in the scheme of the statute.
d) The essential feature of the subject registered marks GOA does not indicate
the geographical origin of the goods applied for under the subject registrations
which is GIN. It is pertinent to note that the Respondent No. 1 does not
manufacture or sell its products in the State of Goa. Thus, the Respondent No.
1 uses the mark GOA as a trade mark and not in a descriptive manner. Thus,
the Respondent No. 1's mark is not liable to he struck off merely because it is a
geographical name.
30. NO EMBARASSMENT TO THE MEMBERS OF THE TRADE
In this regard, it is submitted by the respondent No. 1, as under:-
Section 30 Act not constituting Infringement
(1) Notwithstanding anything contained in this Act, the following acts
do not constitute an infringement of the right to use of a registered
trade mark:-
(a) Where a trade mark in registered subject to any conditions
or limitations, the use of the trade mark in any manner in
relation to goods to be sold or otherwise traded in, in any
place, or in relation to goods to be exported to any market, or

in any other circumstances, to which, having regard to those
conditions or limitations, the registration does mi extend'.
It is pertinent to note that as on the date of the judgment in Imperial Tobacco Co. v.
Registrar of Trade Marks (supra.), the law on granting registration subject to any
condition or limitation under Section 30(a) of the Trade and Merchandise Marks Act,
1958 was prevalent Wherein the traders could use the trade mark in any manner in
relation to the goods sold/traded, in any place, as per the condition(s)/limitation(s) put
therein.
Section 30(2) of the Trade Marks Act, 1999
Section 30(2) -- a registered trade mark is not infringed where--
The use in relation to goods or services indicates the kind, quality,
quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services or other characteristics
of goods or services.
It is submitted that the registration of a geographical mark is not
infringed if the same is used or applied for goods only to indicate the
origin of the goods there-under. Therefore, the use of the subject mark
will not amount to infringement of Respondent No. 1's registrations
provided their use falls within the domain of Section 30(2)(a) of the
Trade Marks Act 1990. In 1958 Act did not take into consideration the
honest and bona fide use of a mark indicating the geographical origin
of the goods and services which is currently protected and is a
statutory defence under the 1999 Act. Even though the registration for
geographical marks under the 1958 Act were granted at high standards,
the present law has rather streamlined the statute and has also
recognized rights of a proprietor in a trade mark and those of the other
traders to be distinguishable under certain conditions.
Thus, it is stated that in view of above, the subject registrations are not
liable to be removed from the Trade Marks Register as the same are not
limiting the rights of the other traders so as to use its essential mark
GOA in a descriptive manner or to indicate the source of the
goods/services there-under.
31. DISTINCTIVENESS
• Section 9(1)(b) of the Trade Marks Act, 1999 has been further elaborated in
comparison to its' counterpart Section 3(1)(b) from the UK Trade Marks Act,
1994 to the extent that under the Indian Law there is explanation as to what
constitutes distinctiveness. The same has been elaborated herein below:
UK Trade Marks Act, 1994 Trade Marks Act, 1999
S e c t i o n 3: Absolute Section 9: Absolute grounds for refusal of
grounds for refusal of registration:-
registration
(1) The trade marks-
(1) The following shall not
be registered (a) Which are devoid of any distinctive
character, that is to say, not capable of

(b) trade marks winch are distinguishing the goods or services of
devoid or any distinctive one person from those of another person:
character,
The essential feature of the subject registered marks GOA for gin is inherently
distinctive as it has been arbitrarily applied to gin which is not recognized as being
originated from the State of Goa, Secondly, the Respondent No. I does not manufacture
or sell gin under the mark GOA in the State of Goa. As the mark GOA is inherently
distinctive for gin, it is capable of distinguishing the goods of Respondent No. 1 from
others and thus has distinctive characters. In light of the same, it is submitted that the
subject registered mark containing the essential mark GOA of the Respondent No, I has
not been registered in violation of the Section 9(1)(a) of the Trade Marks Act. The
subject mark which contains the prominent and essential feature GOA is arbitrary to the
goods for which it is registered under class 33 being 'gin'. It is settled principle of law
that arbitrary marks are inherently distinctive to the goods applied for and therefore do
not require a secondary meaning to secure registration or to protect it.
In the alternative, without prejudice to the above argument, if it is so required that the
Subject registration including the essential feature GOA must acquire a secondary
meaning to secure registration or to protect it, the same has to be seen in light of
Section 32 of the Trade Marks Act, 1999.
Section 32: Protection of registration on around of distinctiveness in certain
cases-
Where a trade mark is registered in breach of sub-section (1) of
Section 9, it shall not be declared invalid if, in consequence of the use
which has been made of it, it has after registration and before
commencement of any legal proceedings challenging the validity of
such registration, acquired a distinctive character in relation to the
goods or services for which it is registered.
Therefore, the date of user 01/01A994 of the subject registration as on the date of
application is irrelevant to the present rectification proceedings because even if the
subject regulations were granted registrations in contravention to the provision of
Section 9 of the 1999 Act, the same is liable to be maintained under Section 32 of the
1999 Act, if it is shown that the subject registrations have also acquired a distinctive
character in relation to the goods or services for which the registration is granted.
Further, the subject registrations cannot be rectified on the ground that there, was no
user on the date when the applications were filed. Further, the subject registrations
have also acquired a secondary meaning after extensive use for the past 24 years.
Therefore, the subject registrations have also acquired a distinctive character in relation
to GIN.
32. Arguments of the Applicant
The Applicant submits that the word GOA is inherently incapable of registration. The
word GOA is not a name of an insignificant or unimportant geographical area of which
people have never heard of or of which people would never relate the impugned goods
to be originating from Goa is an extremely popular tourist destination, attracting tourist
not just from within India but from different parts of the world. There would hardly be
anyone who has not heard of or is not aware of the popularity of GOA as a tourist place.
Any reference to the word GOA immediately and unquestionably leads one to think of

State of Goa. In such circumstances, it can never be suggested, as is falsely suggested
by the Respondent herein, that the word GOA has acquired a secondary meaning
denoting the Respondent's impugned goods bearing the impugned trade mark. The word
GOA can never shun its inherent descriptiveness and can never be capable in law of
distinguishing goods of the Respondent from those of others.
33. In the Matter of Applications by the Liverpool Electric Cable Company Limited to
register Trade Mark 1929 (46) RPC 99. In the facts of the said case, the Applicant used
the trade mark "Liverpool Cables" in relation to electric cables for a period of 26 years
before making application for its registration in relation to the said goods. However,
despite the said user, the Registrar of Trade Marks held that the word "Liverpool" is not
prima facie capable of distinguishing Applicant's cables or of becoming distinctive of
them; that Liverpool was one of a class of geographical names which were of such
importance that the name ought not to be registered to any one trader; that the word
"Liverpool" describes the common characteristic of vast quantities of goods, namely that
they come from Liverpool; and that the phrase "Liverpool Cables" meant, not the cables
of the Applicant Company, but cables manufactured or dealt in at Liverpool. In the
appeal filed by the Applicant, Mr. Justice Romer reversed the Ld. Registrar's judgment
while holding that (i) the Applicant has produced credible evidence to show
distinctiveness of the trade mark "Liverpool Cables"; and (ii) the only consideration that
is relevant in dealing with an application to register a geographical name is as to
whether that name has any connection with the class of article in respect of which it is
proposed to register the name as a mark and since the word "Liverpool" has no special
significance in connection with cables, the same is entitled for registration. 1 The
Registrar of Trade Marks challenged the judgment of Justice Romer before the Court of
Appeal. Lord Hanworth M.R., while reversing the Judgment of Mr. Justice Romer, held
as follows:
"In the Davis case ((1927) 44 R.P.C. 412) I made some observations in my
judgment about the considerations which ought to apply to words, and I
pointed out that Lord Justice Vaughan Williams had said in the case of
Hommel v. Bauer & Co. (1905) 22 R.P.C. 43, at page 48) at a time when, of
course, the Act of 1905 had not come into force, but these observations are
general.--
"In all these cases if primary meaning of a word is a simple and easy
primary meaning, known to everybody, it is extremely difficult to
establish that in any particular trade this word has lost its well-known
and original meaning, and in that trade acquired a secondary meaning
to the exclusion of the natural and original meaning of the word. And,
of course, this difficulty is not nearly so strong or so difficult to get
over in a case where the word which is applied is a word of which the
meaning is not one which would be known to everyone who came in
contact with the word."
Now Sir Duncan Kerly asks us to register "Liverpool Cables" not as connoting
that the cables have been made at Liverpool at all; whether the works were
moved to Leeds or to Newcastle, makes no difference. What Sir Duncan Kerly
claims is that "Liverpool Cables" means the Applicants' goods and nothing else;
so that he has secured a secondary meaning to "Liverpool," that is to say, that
it means the Applicants' goods and no others. Applying those observations of
Lord Justice Vaughan Williams, which to my mind seem to be grounded on very
good sense, is it right to say that "Liverpool Cables" with that ward "Liverpool"

has so become distinctive of the Applicants' goods, and has lost its primary
meaning? It appears to me that is a matter for grave consideration, and
inasmuch as there is no question that some taint or disability applies to
geographical words on the whole, it requires considerable force of argument to
hold that this word "Liverpool" has ceased to be used in its primary meaning
and when you come to regard the rights of the public at large, the traders at
Liverpool and the like, it appears to me that the Registrar would be quite right
in holding that a word of that importance and significance ought not to be used
or allowed to be treated as a word capable of distinguishing, because it has not
merely to be capable in fact, but it must be capable in law. The question as to
whether the words do distinguish the goods is a question of fact, of course, and
I need not go back to Lord Justice Moulton's judgment. Indeed when you are
dealing with a matter which is a question of degree, it is a question of fact, but
Lord Justice Moulton in giving the illustration of Monte Rosa cigarettes, and
Teneriffe boiler plates, has given an illustration where a geographical term has
been used in such a collocation as clearly to indicate that there was nothing
geographical in its sense. As regards Monte Rosa cigarettes the geography must
cease, and it must be but a pet name for the cigarettes; equally with the boiler
plates and Teneriffe. But when we come to a large trading centre like Liverpool,
it seems to me that very different considerations apply. Therefore the word
"Liverpool" appears still to remain a descriptive term, and I am quite conscious
of the fact that you may have a term which is both descriptive and distinctive,
but before it is to be registered as a trade mark, it must have become
distinctive in the sense that the distinctiveness entirely outweighs the
descriptiveness."
(emphasis supplied by the Applicant)
34. While on the said Judgment, the following observations of Lawrence L.J. in the said
Appeal:
"Now in dealing with the words in Section 2, sub-section (2), of the Act of
1919, the learned Judge has expressed a doubt whether there is any distinction
between "capable of distinguishing" and "adapted to distinguish." In the
circumstances of the present case I think there is no such distinction. I
expressed my views in the 'Ustikon's case as to the difference there is between
those two phrases, and it will be seen from what I said there, that the
expression "capable of distinguishing" seemed to me to have a somewhat wider
import than the expression "adapted to distinguish" as interpreted by the
authorities. That observation of mine had reference to a mark which at the date
of the application had not, but which if used long enough, might thereafter
become distinctive of the goods of the proprietor of the mark. That distinction
is immaterial in this case, because here we have a case where it is shown that
the user, of the mark for 20 years had rendered it distinctive of the goods. We
are not, therefore, dealing with a case where a short user such as two years
might not have rendered the mark distinctive, but a continued user might
thereafter render it distinctive. Therefore, although for present purposes, it
seems to me that the same considerations which would apply to an adapted to
distinguish, also apply to an application under the Act of 1919 to register a
mark on the ground that it is capable of distinguishing, yet in neither case is
distinctiveness in fact conclusive. In this respect, therefore, I differ from the
reasoning of the Learned Judge upon which I think the whole of his judgment is
founded.

The crucial question which the Court has to determine in the present case is,
whether the words "Liverpool Cables" are really adapted to distinguish or
capable of distinguishing the goods of the Applicants. What do those words
denote according to their ordinary signification? It seems to me impossible to
dispute that such words may have been rendered distinctive either, if there are
other cables manufactured or marketed in Liverpool. It is quite possible that
such words may have been rendered distinctive either, if there are other cable
manufacturers in Liverpool, because such manufacturers have been complacent
and have allowed the applicants to describe, their goods as "Liverpool Cables",
or because the Applicants were the only manufacturers of cables in Liverpool.
Also it is not inconceivable, that the Applicants' own name may have had a
great deal to do with it. But whatever may be the reason which has rendered
those words distinctive, it seems to me in the circumstances that they ought not
to be placed upon the Register as a Trade Mark. Liverpool is one of the largest
trading centres in the United Kingdom, and it is to my mind not to be thought
of that a manufacturer of or dealer in goods of a kind which ordinarily be
manufactured and merchanted in such centres should be allowed to monopolise
words which simply denote that the goods come from that centre. What seems
to me to be the vice in registering such words as we have here is that such a
registration must tend to embarrass traders who are either already trading in
cables in Liverpool, or who may hereafter so trade; any such traders would
have a difficulty in describing their own goods, if prevented from using the
words "Liverpool Cables". In considering such a mark as this, it seems to me
important to bear in mind not only that Liverpool is a large manufacturing
centre, but also that it is a centre in which it is proved that cables are already
being manufactured, and in which there is no reason to suppose there may not
be other manufacturers of and dealers in cables in the future whose rights it is
the duty of the Court to protect."
35. The Applicant submits that GOA is one of the most popular tourist destinations, not
just in India but in the entire world. A monopoly over the word GOA in relation to
alcoholic beverages embarrasses the present and future manufacturers and traders of
alcoholic beverages in GOA, who have/will have difficulty in describing their own
goods. The continuance of the impugned registered trade mark on the Register of Trade
Marks therefore hampers the rights of such manufacturers and traders to bonafidely use
the word GOA in a descriptive sense in relation to their alcoholic beverages.
Considering the importance of the word GOA as a tourist place and considering the
public interest involved, the impugned registered trade mark is entitled to be
removed/rectified from the Register of Trade Marks.
3 6 . The same issue again came up before the House of Lords in Yorkshire Copper
Works Limited's Application for a Trade Mark 1954 (71) RPC-150. In the facts of the
said case, the trade mark "Yorkshire" had admittedly attained 100% factual
distinctiveness in relation to Applicant's solid drawn tubes and capillary fittings.
However, the Registrar of Trade Marks refused the application for registration of
"Yorkshire" on the ground of the same being a geographical name. The Court of Appeal
upheld the said refusal. The Applicant challenged the Judgment of Court of Appeal to
the House of Lords. The House of Lords, while affirming the Judgment of Court of
Appeal in "Liverpool Case", held that the factual distinctiveness is not always conclusive
and that regard must also be given to inherent adaptability of a trade mark to
distinguish the goods/services of one from the other. The following observations by

Lord Simonds (Lord Chancellor) are apposite:
"In my opinion the decisions of this House in the W. & G. case and the
Glastonbury case are fatal to this proposition and I am content to accept as
accurate the clear exposition of those cases given by the learned Master of the
Rolls in the present case. He took the view which I share that the Court of
Appeal had in the Liverpool Cable case rightly interpreted the opinion of Lord
Parker in the W. & G. case and that this House, in its turn, in the Glastonbury
case endorsed that interpretation. Accepting that view of the law, which indeed,
if the matter were res integra, I should not hesitate to commend to your
Lordships, I do not see how the Registrar could have come to any other
conclusion. Unless, having found distinctiveness in fact, he needed to pay no
regard to the other factor of inherent adaptability, he was faced by the fact that
there could not well be a geographical name less "inherently adapted" than
Yorkshire to distinguish the goods of the Appellants. I do not propose to try to
define this expression. But I would say that, paradoxically perhaps, the more
apt a word is to describe the goods of a manufacturer, the less apt it is to
distinguish them: for a Word that is apt to describe the goods of A, is likely to
be apt to describe the similar goods of B. It is, I think, for this very reason that
a geographical name is prima facie denied registrability. For, just as a
manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet,
so he is not to claim for his own a territory, whether country, county or town,
which may be in the future, if it is not now, the seat of manufacture of goods
similar to his own. I do not ignore that some protection is given by Sec. 8 of
the Act, but I accept the view frequently expressed in regard to this section,
and to Sec. 44 of the earlier Act which it replaced, and in particular by Lord
Maugham, Lord Atkin and Lord Russell of Killowen in the Glastonbury case, that
it should not afford a guide as to whether a name should be registered or not.
I am led to suggest that it is perhaps easier to, define "inherent adaptability" in
negative than in positive terms; in other words, I would say that a geographical
name can only be inherently adapted to distinguish the goods of A when you
can predicate of it that it is such a name as it would never occur to B to use in
respect of his similar goods. Of such names the classic examples are "Monte
Rosa" for cigarettes or "Teneriffe" for boiler plates. There will probably be
border-line cases, but there is, in my opinion, no doubt on which side of the
border lies Yorkshire', a county not only of broad acres but of great
manufacturing cities. If the Liverpool Cable case was rightly decided, as I think
it clearly was, a fortiori the Registrar was right in refusing registration to
"Yorkshire"."
37. Again in YORK Trade Mark 1984 (101) RPC 231, the question of registrability of the
word YORK was raised before the House of Lords. Much like the facts of "Yorkshire
Case", the word YORK had also acquired 100% factual distinctiveness. Lord Wilberforce,
before reciting Lord Hanworth's above mentioned words, independently explained the
importance of a trade mark being "capable in law of distinguishing", in the following
words:
"The second distinction (between "inherently adapted [or capable]," and;
"adapted [or capable] in fact") though verbally new in the Acts of 1937-8 is, on
the other hand, relevant and crucial. It was not new in the law. In relation to
adaptability it is sufficient to quote from a recent opinion of Lord Diplock in this

House. In Smith Kline & French Laboratories Ltd. v. Sterling Winthrop
Group Ltd. MANU/UKHL/0016/1975 : [1976] RPC 511, 538, he said:
"Long before the reference to inherent adaptability had been
incorporated in the current statutes dealing with trade marks, it had
been held upon grounds of public-policy that a trader ought not to be
allowed to obtain by registration under the Trade Marks Act a monopoly
in what other traders may legitimately desire to use. The classic
statement of this doctrine is to be found in the speech of Lord Parker in
the W.& G. case (1913) 30 RPC 660 at page 672 where he said that the
right to registration 'should largely depend on whether other traders
are likely, in the ordinary course of their business and without any
improper motive, to desire to use the same mark, or some mark nearly
resembling it, upon or in connection with their own goods.'"
And there can be no doubt that exactly similar reasoning must be applied to the
words "inherently capable of distinguishing" in section 10(2)(a) of the Act.
They mean, in effect "capable in law of distinguishing," the relevant law being
the accepted principle that, in relation to certain words, of which laudatory
epithets and some geographical names were established examples, traders
could not obtain a monopoly in the use of such words (however distinctive) to
the detriment of members of the public who, in the future, and in connection
with other goods, might desire to use them. That this principle has been firmly
laid down in relation, in particular, to geographical words, by a strong current
authority, I shall now demonstrate."
It is submitted a laudatory epithet or a popular geographical name can never be said to
have capability in law of distinguishing goods/services from those of others, although it
may have acquired factual distinctiveness. To illustrate, the word BEST has been
extensively used by Brihanmumbai Mahanagarpalika since time immemorial and has in
fact acquired factual distinctiveness. However, the word BEST can never be capable in
law of distinguishing goods/services of Brihanmumbai Mahanagarpalika from those of
others. Similarly, a popular geographical name such as LIVERPOOL or GOA can never be
capable in law of distinguishing the goods/services of one person from those of others.
3 8 . In the matter of Imperial Tobacco Co. v. Registrar of Trade Marks
MANU/WB/0109/1977 : AIR 1977 CAL-413, the Applicant filed an application for
registration of a trade mark label containing the word SIMLA and device of snow clad
hills in respect of manufactured tobacco on a proposed to be used basis in the year
1960. The Registrar of Trade Marks raised an objection to its registrability on the
ground that the word SIMLA is a geographical name. In the year 1963, the Applicant
withdrew the said application and filed a fresh application for registration of the same
trade mark claiming user since the year 1960 and stated that till the date of filing the
said application about 42 crores of Applicant's cigarettes were sold under the said trade
mark and over Rs. 15.50 lakhs were spent on advertisement. The Registrar of Trade
Marks, however, refused the application for registration of the said SIMLA label. The
Applicant preferred an appeal against the Ld. Registrar's said Order of refusal to the
Hon'ble Calcutta High Court. The Ld. Single Judge of the Calcutta High Court upheld the
Order of the Registrar. The Applicant filed an appeal against the Judgment delivered by
the Ld. Single Judge of the Hon'ble Calcutta High Court. The Division Bench of the
Hon'ble Calcutta High Court upheld the Judgment of the Ld. Single Judge. The relevant
paragraphs from the said Judgment are reproduced hereinbelow:

"22. In regard to registration in Part B of the register provisions have been
made in Sub-section (4) of Section 9. The essential conditions are that the
mark in relation to goods proposed to be registered is (1) distinctive or (2) if
not distinctive, capable of distinguishing the goods of the applicant from those
of others. To be distinctive (which means adapted to distinguish) or capable of
distinguishing the goods as aforesaid, there may be some inherent qualities or
distinguishing characteristics in the mark itself which may make it so distinctive
or capable of such distinguishing the goods of the applicant from others. The
degree or extent of such inherent quality that may satisfy the requisite
qualification for registration is left to the discretion of the Tribunal to
determine, with his expert knowledge as the extent of quality is always variable
from mark to mark.
23. If however the mark has no inherent distinguishing qualities or features,
the distinctiveness may be acquired by appropriate user or other circumstances
thereby overcoming the negative quality in the mark. Here again the Tribunal
has been given the discretion to register a mark in the B part of the register
taking into account the extent of the distinctiveness or capability of
distinguishing the applicant's goods from others in fact acquired by reason of
the use of the trade marks or other circumstances. There is thus actually no
question of exclusion of one clause by another in Sub-section (5) of Section 9
but all relevant factors are to be taken into consideration by the Tribunal who
as an expert will exercise his discretion in the light of the provisions of law and
judicial interpretation thereof. As has been pointed out by Kerly, a decision
upon registrability involves balancing an inherent tendency to unregistrability
on the one hand against evidence showing distinctiveness in fact on the other.
24. All these are subject to the condition that where inherent unsuitability is so
strong no degree of distinctiveness in fact can counter-balance it, so that some
marks are totally unregistrable. This is for the reason that if any mark for
example violates the requirements of Sub-clause (d) of Sub-section (1) of
Section 9 such mark because of inherent infirmity can never be distinctive or
capable of distinguishing the goods of the applicants sought to be registered
from others goods either inherently or by reason of user of the mark or other
circumstances.
25. A geographical name according to its ordinary signification is such mark
inherently or otherwise incapable of registration subject to such minor
exceptions in regard to other aspects as noticed in judicial decisions referred
hereinafter, in Corpus Juris Vol. 63 (1933 Edn.), in Chapter of Trade Marks etc.
Art. 53 (pp. 356-7) it is stated:
"Geographical terms and words in common use to designate a locality,
a country, or a section of country cannot be monopolised as trade
marks; but a geographical name not used in geographical sense to
denote place of origin, but used in an arbitrary or fanciful way to
indicate origin or ownership regardless of location, may be sustained
as a valid trade mark."
31. In the trade mark we are concerned with there is no dispute that though
the mark is composite in character, including word 'Simla' in bold character
with snow clad hills in outline and an inscription that the product is of the
appellant in ordinary character or manner, the word 'Simla is the prominent

feature of the mark and distinctiveness is claimed in respect of the word
'Simla'. Even so the trade mark is not confined to the word 'Simla' and in the
affidavits filed by the smokers on behalf of the appellant, the deponents say
that the 'Simla' label bears the inscription in ordinary character of being the
product of the appellant whose products are of good and standard tobacco. It is
accordingly not possible to say that the word 'Simla' by itself has acquired a
secondary meaning to its customers, so as to 'conjure in their mind the
cigarettes belonging to the appellant only and to none else even if the mark did
not contain the inscription that it was a product of the appellant. A trade mark
like 'Simla' on goods to distinguish them from others goods as claimed must be
the trade mark on its own without any assistance from indications like such
goods being a product of the appellant. That is not the case possible here, as
the mark 'Simla' does not stand on its own, so that it is not possible to say that
by reason of the use 'Simla' is adapted to distinguish or capable of
distinguishing as the goods of appellants to the exclusion of goods of others.
32. As we have seen 'Simla' is not an invented word; and though it has no
reference to the character or a place of origin of the goods sought to be
registered it is not inherently distinctive or adapted to distinguish as there is no
sufficient distinguishing characteristic in the mark itself so that distinctiveness
might be expected to result whatever the type and scale of user and thus secure
an estimation of the positive quality in the mark. This infirmity brings the trade
mark out of the operation of Clause (a) of Section 9(5). There is no other
circumstances pleaded and the user of the trade mark 'Simla' by itself as we
have seen, on the evidence adduced cannot be said in fact as distinctive or
capable of distinguishing the goods of the appellants from others by use in
consequence whereof Clause (b) of Section 9(5) has also no operation. In
arriving at this conclusion, we are not influenced by the finding that three
years' time is too short for acquisition of distinctiveness, as there may he cases
where a product may attain such distinctiveness within a short spell of time for
its inherent qualities of the product.
3 3 . Even assuming that the trade mark 'Simla' has become capable of
distinguishing by use thus fulfilling the condition of Clause (b) of Section 9(5)
entitling registration in Part B of the register, there are other formidable hurdles
in the way for registration as already noted.
34. As we have seen, the mark 'Simla' is a geographical name and the snow-
clad hills in outline in the mark indicates its use in ordinary or geographical
signification, so that the mark is neither a fancy or invented word nor one with
a secondary meaning as has been observed in Kerry's Treatise (10th Edition).
"8.51. A word is not debarred from registration under Section 9(1)(e) as a
distinctive word merely because it is geographical and so cannot be registered
under Section 9(1)(d). Some geographical names can be inherently adapted to
distinguish the goods of particular traders, but only if it can be predicated that
they are such names as it would never occur to any other trader in such goods
to use. At the other extreme, the name of a major industrial area or city will he
totally un-registerable in respect of almost any goods. In between come the
marks calling for more or less evidence that they are distinctive in fact.....it
may lip the balance that the applicant ran show that he has a natural or legal
monopoly of the production of goods concerned in the place concerned: but
that alone will not make a geographical name registrable without substantial

evidence of distinctiveness."
Though Clause (d) of Section 9(1) which refers to geographical name in ordinary
signification relates to registration in Part A of the register, the distinctiveness of the
trade mark which makes it capable of distinguishing the applicant's goods, as required
in Clause (b) of Section 9(5) in respect of registration in Part B of the register, it is a
vital and essential element for the purpose. Such distinctiveness is not possible for any
geographical name in its ordinary or geographical signification. Though the rule has
been relaxed in respect of small and insignificant place or where there is no
geographical significance of the mark, if the geographical name propounded for
registration is the name of an important country or a large district, county or city of
commercial importance or has a geographical signification, the mark will be refused
registration notwithstanding evidence of long and extensive use. In Liverpool Electric
Cable Co. Ltd.'s case ((1929) 46 RPC 99) where registration was sought for trade mark
'Liverpool' in both Parts A and B of the register it was held that the name of an
important commercial centre as Liverpool, even though it may in fact be distinctive of
the goods in respect of which it is sought to register it is not registrable. In respect of
Monte Rosa Cigarettes or Teneriffe Boiler Plates it was noted that there was no
geographical significance in the mark which were mere pet names. It was further held
that Liverpool being a well known city is geographical and not capable of distinguishing
the goods of any particular trader and such registration will tend to embarrass traders
who are in the trade or who may hereafter so trade as they would have difficulty in
describing their goods if prevented from using the word 'Liverpool' Cables.
3 8 . Mr. Chakrabarty has referred us to the decision in Tijuana Smalls' case
where registration in respect of cigars was allowed in Part B (1973 RPC 453).
Tijuana is a town in Mexico with inhabitants over 2 lakhs Graham J. in allowing
registration in Part B held that the question whether a geographical word could
be registered was one of degree. These words whose primary signification is
geographical and where the geographical significance is so general and so
likely to be adapted or desired for use by more than one trader, it would be
wrong, however distinctive they might in fact have become ever to allow one
trader by registration to seek to monopolise them (e.g. Yorkshire or Liverpool).
There are other 'geographical' words (e.g. North Pole) where, for one reason or
other, when considered as applied to the goods in respect of which it is sought
to register them, it is clear that the use is in fact clearly not geographical but
fanciful, and was therefore, at least, capable, particularly by use, of being
distinctive in practice of one of manufacturers' goods. Registration could,
therefore, in such cases be allowed without causing inconvenience to or
encroaching upon the reasonable trading rights of other manufacturers. The
learned Judge found that the conclusion that Tijuana, an arid area, could well
become tobacco producing centre being so improbable should be rejected.
3 9 . Strong reliance was placed on this decision by Mr. Chakravarti who
contended that Simla was never a tobacco producing centre or likely to be so
and there is no chance or occasion for any prejudice being caused to other
traders or manufacturers. He also referred to the Trade Marks Journal published
by the Government containing advertisements of various geographical names
for acceptance: 'Sheemla' for agarbati, 'Gulmarg" for wire, 'Shalimar' for
engineering goods 'Kalighat' for biddies were cited and referred. In all such
cases it appears that the names prima facie are fanciful without geographical or
ordinary signification and at this stage it will not be proper to depend on those
marks without further material or evidence. The propositions of law in respect

of geographical names have been referred to above and in view of the imprint
of snow clad hills in outline in the trade mark 'Simla' the ordinary or
geographical signification is obvious and patent even though it has no reference
to the quality or place of origin of the goods as at present advised. Further,
registration of such trade mark may hamper or embarrass the trade or traders
in or around the locality in future as held by judicial authorities cited earlier in
similar cases. Also 'Simla' is too prominent a city, the capital of Himachal
Pradesh, well known in the country and abroad and in its ordinary or
geographical significance it is inherently neither distinctive nor adapted to
distinguish also nor capable of distinguishing the goods of the appellant as a
particular trader from those of others and is also hit by the provisions of
Section 9."
39. The Applicant submits that in view of the above, geographical names are usually
considered inherently incapable of being registered. Only in a few exceptional cases,
where such marks do not designate the geographical place/locality but indicate the
origin of goods/services, the same may be registered. For example, words such as
Santa Fe for automobiles, Mount Blanc for pens, Amazon for online retail market, North
Pole for banaras etc. do not designate their ordinary or geographical signification, and
hence they can be registered. The Applicant says and submits that, however, the
inherent unsuitability of the word GOA is so strong that no degree of factual
distinctiveness can ever counter-balance the same. The word GOA is not a small or
insignificant place rather, as stated above, it has a very important and special
geographical significance. The Applicant submits that the word GOA invariably denotes
the State of Goa and not the goods or services of anyone much less that of the
Respondent. The Applicant says and submits that no amount of use of the word GOA by
the Respondent would ever cure its inherent unregistrability.
4 0 . In Manipal Housing Finance Syndicate Ltd. & Anr. v. Manipal Stock and Share
Brokers Ltd. & Ors. MANU/TN/0102/1996 : (1999) 98 comp-cas 432 (madras), the
Hon'ble Madras High Court refused an injunction in an action for passing off involving
the word MANIPAL. The relevant paragraphs from the said judgment are reproduced
hereinbelow:
"31. The commercial use of geographical names is universally well known.
People and business enterprises identify themselves with the place from which
they hail, live in or carry on business. Many a business enterprise uses the
name of the city, town, region, or country as part of its business or corporate
name. Monopoly over the use of geographical name is not the rule, but a rare
exception to the rule.
32. In any large city are to be found more than one business establishment
whether or not carrying on the same trade, using the name of the town or city
as part of its business name. In a large city like Madras, there are several large
companies - well known nationally - who use the name of the city as part of
their corporate name. Geographical names are invariably and subject to rare
exceptions public juris - are in the public realm available for use by any one
choosing to adopt it as part of the name of the business enterprise.
33. Any exception to this rule must truly be an exception. It is only in a rare
case where the name has been used very extensively for a long period, is so
well known in the market as to be identified in the public mind with the product

or service rendered by the business enterprise, that the court may consider
granting injunctive relief to a plaintiff."
"43. Prior user of the city name as part of their corporate name by itself does
not confer any monopoly in favour of the plaintiffs. What is in the public
domain cannot be appropriated and made one's own merely by being the first
to use it as part of the corporate name. The right to such user of the city's
name is available to others in the same measure as it is available to the
plaintiffs. Neither the plaintiff's nor the defendants can claim exclusive right to
the commercial use of the name "Manipal".
41. The Applicant also relies upon the Judgment of House of Lords in A. Bailey & Co.,
Ld. & Clarke, Son & Morland, Ld. 1938 (55) RPC-253. In the facts of the said case, the
trade mark "Glastonburys" was registered by the Respondent in relation to slippers,
slipper-shoes and motor overshoes. The town of Glastonbury had a reputation for
manufacturing and selling sheepskin slippers. The House of Lord, while allowing the
appeal and restoring the judgment of the trial court, rectified the Respondent's
registered trade mark "Glastonburys". The following observations of Lord Atkin are
apposite:
"I assume, therefore, that the Respondents proved that the word was distinctive
in fact, but for the reasons given by my noble and learned friend, I think it was
not "adapted to distinguish". It matters little whether one says that in the
circumstances the word was incapable of being adapted to distinguish, or that
in the exercise of his discretion the Registrar should refuse to register. I myself
prefer to say that in circumstances like the present where an applicant seeks to
register the name of the town in which both he and competitors with himself
are engaged in manufacturing the same class of goods the name is incapable of
being adapted to distinguish. It should at the outset be considered
unregistrable. I do not find it necessary to invoke Section 44, the object of
which appears to be to give protection to traders in respect of a name which is
'registered and must be treated as adapted to distinguish, and not to afford a
guide as to whether a name should be registered or not. I think that this Appeal
should be allowed and the order of Mr. Justice Clauson restored."
The following observations of Lord Asquith of Bishopstone in Yorkshire Case:
"As to factor (a) (inherent distinctiveness), your Lordships have to consider to
what extent this factor is present in the particular case in which the mark
proposed for registration is a geographical term, e.g., "Yorkshire". I prefer to
envisage this problem in the first instance in abstraction from authority. So
considered, a geographical area, unless extremely small, seems to me
inherently unadapted to distinguish the products of one producer in that area
from those of another in the same area. When the area is as large as Yorkshire,
it seems to me fanciful to dispute this proposition. Indeed, when the trade mark
is geographical, it follows, paradoxical as it may sound, that it can only satisfy
factor (a), where Its significance, in the particular context is non-geographical.
For only so can it serve to distinguish the goods of one producer from the
goods of others. Good imaginary instances of this paradox are "North Pole
Bananas ", "Monte Rosa Cigarettes" and so on. In these instances the

geographical term is clearly not applied in any geographical sense, and pro
tanto may-I will not say must - be a sufficient compliance with Sec. 9(3)(a). If
it were applied in a purely geographical sense, it could not so comply, because
it would simply indicate that the goods in question were supplied within a
particular locality, not that they were supplied only by a specific supplier, and
the last consideration is the only one which, for this purpose, counts.
42. Even the Applicant relies upon the following passage from Halsbury's Law of India
Lexis Nexis Butterworths [Vol. 20(1), New Delhi 2004] at Page 407 [185.727] A
geographical name according to its ordinary signification is such a mark which
inherently or otherwise is incapable of registration. Distinctiveness has been understood
to mean some quality in the trade mark which earmarks the goods so marked as distinct
from those of other producers of such goods. Those words whose primary signification
is geographical are so general and so likely to be adapted or desired for use by more
than one trader, that it would be wrong, however distinctive they might in fact have
become, to allow one trader by registration to seek to monopolize them.
4 3 . The Applicant also relies upon the following passage from the Judgment in
Glastonburys Case (supra) at Page 263:
"In these circumstances ought the word "Glastonburys" to have been registered
as a Trade Mark for slippers in the first instance, and ought it now to be
allowed to remain on the Register? In my opinion the answer to each question
should be in the negative. With the Mark on the Register, no person who
manufactured slippers in Glastonbury or sold slippers manufactured by
someone else in Glastonbury, could advertise his goods as being what in fact
they were, namely, Glastonbury slippers. It is no answer to say that the
Appellants can, notwithstanding the registration, continue their practice of
marking their goods as "made in Glastonbury". They and any future
manufacturers of slippers in Glastonbury, and their respective retail customers,
ought not to be hampered or restricted, by the presence of this Mark upon the
Register, in selecting the particular form of words by which they desire to
describe their goods as being-products of a town which enjoys a reputation in
connection with the manufacture of sheepskin slippers. Just as the Court of
Appeal in a subsequent case (re Boots' Trade Mark, 54 Reports of Patent Cases,
327) thought that the word "Livron" could not properly be registered under
paragraph (5) of Section 9 in respect of tonic medicines for human use,
because it was the name of a French town where similar medicines were
manufactured, so, in my opinion, this word "Glastonburys" cannot properly
remain on the Register in respect of "slippers, slipper-shoes and motor
overshoes".
44. In reply, it is stated on behalf of respondent that as per old law that cases relied
upon by the Applicant are not applicable as per the provisions or Trade Marks Act,
1999. In this regard it is submitted as follows:
In the Matter of Applications by the Liverpool Electric Cable Company Limited to
register Trade Marks, 1929 (46) RPC 99
a. The products manufactured under the mark 'LIVERPOOL CABLES'

manufactured in the city Liverpool due to which the said mark was held
to be descriptive in its use. However, in the present matter the
Respondent No. 11 neither manufacturer nor sells its goods under the
mark GIN in the State of Goa.
b. It was also observed that there are multiple traders manufacturing
cables and the use of the trade mark Liverpool shall cause
embarrassment to them. It is submitted that the said judgment is based
on the provisions of the old law which have been repealed or altered.
However, as per the present regime prevalent in UK and India it is an
absolute ground for refusal of marks which indicate the geographical
origin of the goods applied for.
c. Also, the use of a geographical mark in a descriptive manner so as to
indicate the origin of the goods is protected under Section 30(2)(a),
which protects a trade mark against infringement if used in such
manner as stated hereinabove.
In view of the same, the said judgment is not applicable in the present matter as stated
by the respondent who stated that the same is not in accordance with the present
regime and could not have been passed under the Current Law.
• Yorkshire Copper Works Limited's Application for a Trade Mark. 1954 (71)
RPC 150
In the said judgment, it was observed that:
"the more apt a word is to describe the goods of a manufacturer, the less apt it
is to distinguish them: for a word that is apt to describe the goods of A, is
likely to be apt to describe the similar goods of B...For just as a manufacturer is
not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to
claim for his own a territory, whether country, country or town which may he in
the future, if it is not now, the seal of manufacture of goods similar to his own.
It is also submitted that the said judgment was passed under the Old Law in UK which
barred registration to geographical names, whereas the Current law contains the
absolute grounds for refusal to marks indicating the geographical origin of die goods
applied for there-under. Also, the Current Law in India further protects the registration
of a mark on the ground of distinctiveness under Section 32.
It is pertinent to note that, as per Section 9(1)(d) of the Old Law in UK, a mark must
not contain word(s) which is/are a direct reference to the character or quality of die
goods, and not being according to its ordinary signification a geographical name.
However, the said provision was amended and further modified under Section 3(1)(c) of
the Current Law in UK, which reads the terms 'quality' and 'geographical origin'
separately and independent of each other. Therefore, the said judgment is inapplicable
to the present matter.
It is pertinent to note that the said principle applies to marks which are used by the
traders in a descriptive sense, and which are not distinctive. However, in the present
matter, the word GOA, which is the prominent and essential feature or the subject
registered mark, is arbitrary to GIN in its application and is inherently distinctive for the
said good. Also, the mark GOA of the Respondent No. 1 is distinctive and is capable of
distinguishing from the other traders. Again, the trade mark Yorkshire was considered

less "inherently adapted" so as to distinguish the goods of the Appellant in the said
case.
Therefore, the said judgment is not applicable in the present matter and the essential
mark GOA is not violating the provisions of the 1999 Act and therefore the registration
must subsist.
York Trade Mark. 1984 (101) RPC 231
It is stated by the respondent that in the said case, the High Court of Justice Chancery
Division had stated that:
"...it had been held upon grounds of public policy that a trader ought not to be
allowed to obtain by registration under the Trade Marks Act a monopoly in what
other traders may legitimately desire to use."
Applying the said principle in the present mailer shall be contrary to the provisions of
the 1999 Act prevalent in India, It is submitted that a manufacturer using a
geographical mark with respect to goods indicating its origin from the said place is
protected against an action for infringement infringed under Section 30(2)(a) of the
1999 Act. The mark GOA of the Respondent No. I is used for GIN which is nowhere
associated with the State of Goa.
c. Also, the Respondent No. 1 is not manufacturing or selling the goods in the
State of Goa. Therefore, due to the above mentioned reasons, the registration
for the mark GOA in the name of Respondent No. 1 shall not deprive any other
traders of using the same with respect to goods originating from the State of
Goa, and so far as the said mark is used in a descriptive sense and not as a
trade mark.
In view of the above, the said judgment is inapplicable in the present matter.
Imperial 'Tobacco Co. v. Registrar of Trade Marks, MANU/WB/0109/1977 : AIR 1977
CAL 413
The respondent has submitted that the decision is also not applicable as in the said
matter, the Division Bench of the High Court of Calcutta held that:
"Strong reliance was placed on this decision by Mr. Chakravarti who contended
that Simla was never a tobacco producing centre or likely to be so and there is
no chance or occasion for any prejudice being caused to other traders or
manufacturers. He also referred to the Trade Marks Journal published by the
Government containing advertisements of various geographical names for
acceptance. 'Sheemla' for agarbati 'Gulmarg' for wire, 'Shalimar' for engineering
goods 'Kalighat' for biddies were cited and referred. In all such cases it appears
that the names prima facie are fanciful without geographical or ordinary
signification and at this stage it will not be proper to depend on those marks
without further material or evidence. The propositions of law in respect of
geographical names have been referred to above and in view of the Imprint of
snow clad hills in outline in the trade mark 'Simla' the ordinary or geographical
signification is obvious and patent even though it has no reference to the
quality or place of origin of the goods as at present advised. Further,
registration of such trade mark may hamper or embarrass the trade or traders
in or around the locality in future as held by judicial authorities cited earlier in

similar cases. Also 'Simla is too prominent a city, the capital of Himachal
Pradesh, well known in the country and abroad and in its ordinary or
geographical significance it is inherently neither distinctive nor adapted to
distinguish also nor capable of distinguishing the goods of the appellant as a
particular trader from those of others, and is also hit by the provisions of
Section 9. Sub-section (I). Clause (d) of the Trade and Merchandise Marks Act,
1958."
It is first submitted that at the time of tire said judgment, the old regime was prevalent
which barred registration to geographical names.
It is also submitted that the Division Bench in the said matter with respect to
geographical names observed that the same can be registered, however declined to
protect the rights under the trade mark 'Simla' because they believed that the
registration of the said trade mark will hamper and embarrass the registrability of the
same for the traders in the locality in the future. This aspect has been taken care of
under Section 30(2)(a), Further, as already respectfully submitted hereinabove that the
Section 9 has been amended to exclude geographical names. Such honest and bona fide
use does not amount to infringement of a mark.
Further, Section 32 of the 1999 Act protects registration of a trade mark on the ground
of distinctiveness, which cannot declare a registered mark invalid if the same is
distinctive.
Therefore, on the basis of the above arguments, the said case is therefore not
applicable under the provisions of tire 1999 Act.
45. Counsel for the respondent has also referred few more authorities in support of his
arguments.
i) Sahkar Seeds Corporation v. Dharti Seeds : MANU/GJ/0588/2017 : 2017 (71) PTC 77
(Guj)
The primary highlight of the said judgment of the High Court of Gujarat was the
recognition of change in the term 'geographical name' to 'geographical origin' from the
1958 Act to 1999 Act as already highlighted hereinabove. The same was held in Para
6.1 of the said judgment. The same is reproduced herein below:
"That under old Trade Marks Act, 1958, the Trade Mark Registrar had power to
refuse a trade mark under Section 9(1)(d) if one applies which suggest use of
geographical name, whereas under Section 9(1)(b) of the new Trade Marks Act,
1999, the word 'geographical name' has been replaced by geographical origin
He, therefore, would submit that a person can use a geographical name,
however such name should not be suggestive as if the goods, service, etc are
directly related to the geographical origin."
Applying the same principles in the present proceedings, the mark GOA of (lie
Respondent No. 1 although being a geographical name, is not suggestive of the goods
being GIN which is not related to the State of Goa.
The Learned Single Judge of the High Court of Gujarat went on to further hold dial:
Para 9: With regard to the contention about use of the word "VADHIYAR" which
suggest geographical region, is concerned, 1 am of the opinion that

"VADHIYAR" might he an area of State of Gujarat which is known as per its
geographical situation, but there is nothing on record to suggest that this are is
known for manufacturing of seeds of different types of grains. The seeds
manufactured in Vadhiyari areas neither create some impression about the
qualities, reputation nor other characteristic which attribute to its geographic
origin. It is difficult to accept at this stage that the grant of VADHIYARI BIJ as
Trade Mark by the authority to original plaintiff would mislead the public about
the product. When the registration of the VADHIYARI BIJ WAS granted to the
plaintiff it is difficult to accept that the authority has not considered the same
before issuing the Registration", and
Para 13: "As far as the above argument is concerned, I have already answered
that the word "VADHIYAR" has already acquired distinctive character as a result
of use made by it and the original plaintiff is in the business from 2008 or at
least since 2010 as well as the differences between a use of geographical name
and not geographical origin."
Therefore, it was specifically held that a geographical mark if used in the arbitrary
manner and not in a manner so as to indicate the origin or source of the goods/services
there under is likely to be registered. In view of the above, the subject mark containing
the prominent and essential feature GOA being used and registered for the goods under
class 33 is it geographical mark which does not indicate the origin of the goods there
under and is liable to be registered under the Trade Marks Act, 1999. Without prejudice
to the contention of inherent distinctive character of the mark GOA of Respondent No. I,
the trade mark GOA due to its long, continuous arid extensive use since 1994 has
acquired a distinctive character as a result of use made by it in a trade mark sense.
ii) A similar observation was made in the earlier judgment of Geepee Ceval Proteins and
Investment Pvt. Ltd. v. Saroj Oil Industry MANU/DE/0761/2003 : 2003 (27) PTC 190
(DEL) (Trade Mark Chambal) wherein the Single Judge Justice Mahmood Ali Khan held
that:-
"Para 8: The word 'Chambal' is a geographical name and a geographical name
can be registered as a trade mark if its distinctiveness is proved. Therefore,
Section 9 of the Act does not put a blanket ban on the registration of a
geographical name as a trademark. Moreover, the present case is based on
passing off the goods of the defendant as that of the plaintiffs' goods.
Therefore, Section 27 of the Act would save the action of the plaintiff"
"Para 9: In Bharat Tiles & Marbles Pvt. Ltd. (supra) the trademark involved was
"Bharat" and it was held that mere fact that geographical descriptive name is
adopted is not always a defense in passing off action and an injunction was
granted, in M/s. Hindustan Radiators Co. (supra) the trademark involved was
"Hindustan", which is a geographical name, and an injunction was granted. In
M/s. Khetu Ram Bishambar Das (supra) the disputed trademarks were
"Himalaya" and "Himachal", both geographical names and were registered Was
trademark and the injunction was granted. In Shri Jawaharlal & Anr. (supra) the
trademark 'Bharat, which was a geographical name and an injunction was
granted. In Bajaj Electricals Ltd. (supra), the trademark was 'Bajaj' which was a
surname and was registered as a trademark. In a number of other suits which
have been referred on behalf of the plaintiff the trademark was 'Gwalior' and
'Oxford which are geographical names and the injunction was granted. In South
India Textiles & Ors. (supra) the trademark was 'South India' and it was held

that it does not affect the Emblem Act. In Sunder Hager Association Regd. &
Anr. (supra) it was held that 'Sunder Nagar' a geographical name, can be a
trademark. Same view was taken in Bunwari Lal Sham Lal (supra) where
Landra' a geographical word was upheld as trademark. In Mahendra &
Mahendra Paper Mills Ltd. (supra) the word "Mahendra" was accepted as a
registered trademark and an injunction was granted. All these judgments would
show that geographical name, if it had acquired distinctiveness, can be used as
a trademark and may even by registered under Sub-section (2) of Section 9 of
the Act."
"Para 17: In view of the above submission made on behalf of the defendant,
controversy between the parties now is confined over the use of word
'Chambal'. There is no force in the contention of the counsel for defendant that
as the industrial unit of the defendant is situated on the bank of river Chambal
or in the area near Chambal ravines from which the word 'Chambal has been
taken by the plaintiff, so the defendant had a superior right to use the word
Chambal as trade mark of its product in' comparison to the plaintiffs, whose
industrial unit is located far away from this area in Bundi in Rajasthan State. It
has already has been observed that the word "Chambal' when it has acquired
distinctiveness of the plaintiff could he used as a trademark by the plaintiff for
its product and a passing off action could be maintained against the defendant."
It was held that Section 9 does not put a blanket ban on registration of geographical
marks. The mark GOA of the Respondent No. 1 is not manufactured or sold in State of
Goa, and thus does not indicate the origin of the goods and is thus not capable of
deceiving the public. Also, the said mark is inherently distinctive as it is used arbitrarily
for GIN. Further, without prejudice to the contention of inherent distinctiveness of the
mark GOA, due to the long, continuous and extensive use of the said mark since 1994
by the Respondent No. 1 through its predecessor and thereafter by itself, the same has
acquired distinctiveness and is associated by the public and members of the bade with
the Respondent No. 1 only.
iii) The High court of Delhi held in Hi-Tech Pipes Ltd. v. Asian Mills P. Ltd.
MANU/DE/8065/2006 : 2006 (32) PTC 192 (Del.)
"Para 33 The important aspect to be considered is whether the word 'Gujarat'
has acquired secondary significance and has distinctiveness in respect of the
steel pipes produced by the plaintiff, This principle finds Support front the
judgment of the learned Single Judge of the Gujarat High Court in Bharat Tiles
and Marble Private Ltd. Case (Supra) as it was held that merely because a trade
name is geographically descriptive, it does not imply that an action for passing
off cannot he maintained provided the plaintiff is able to establish the requisite
grounds of deceit by use of similar name."
"Para 38: A perusal of the plaint and documents shows that sufficient material
has been placed on record to substantiate the plea, at least prima facie, of such
user over a period of time from the sates running into crores under the said
trade mark starting front 1987-88 till 2001-02, the details of which have
already been mentioned hereinabove, it does appear prima facie that the name
'Gujrat' has acquired secondary meaning and distinctiveness and has thus come
to be exclusively identified and recognised with the products of the plaintiff.
The defendant is a much later entrant in the field. The various sample invoices
and other documents placed on record do show such vast sales end trade in the

particular product under the trade mark name Gujarat has resulted in a situation
where the trade mark, mine has prima facie acquired secondary significance
and distinctiveness with the plaintiffs product. The use by the defendant of the
same trade name for the same nature of products does seem to be an attempt
at passing off its goods as that of the plaintiffs. The defendant in fact wanted
the plaintiff to restrain itself by a notice but on the plaintiff showing material of
much prior use decided to take a turn in its defense, it may he noted that
further enquiry in this behalf can be made during the trial.
"Para 39. I am thus of the considered view that the interim orders granted on
22.07.2002 are liable to be confirmed during the pendency of the suit
restraining the defendant from using the trade mark 'Gujarat or 'Gujrat."
46. Relying on the principles laid down in the above case, it is submitted on behalf of
respondent that the mark GOA of the Respondent No. 1 which is being used by the
Respondent No, I though its predecessor in interest since 1994 has garnered immense
goodwill and reputation and has thus acquired a secondary meaning.
47. The respondent has referred CORPUS JURIS ["Vol. 63, (1933 Edn.) in Chapter on
Trade Marks, etc,. Article 53, pp. 356-7]
"Geographical terms and words in common use to designate a locality, a
country, or a section of country cannot he monopolized as trade marks; but a
geographical name not used in geographical sense to denote place of origin:
but used in an arbitrary or fanciful way to indicate origin ownership regardless
of location, may be sustained as a valid trade mark"
The leading authority relating to geographical names and section 3(1)(c) of the Act is
the judgment of the CJEU in Windsurfing Chiemsee Produktions - und Vertriebs GmbH
(WSC) v. Boots - und Segelzubehor Walter Huber and Franz Attenberger (Joined cases
C-108/97 and C-109/97 ("Windsurfing"). The CJEU in the said judgment held under
paragraph 17 that-
"In view of the foregoing, the answer to the questions an Article 3(1)(c) of the
Directive must be that Article 3(1)(c) is to be interpreted as meaning that;
It does not prohibit the registration of geographical names as trade marks
solely where the names designate places which are, in the mind of the relevant
class of persons, currently associated with the category of goods in question; it
also applies to geographical names which are liable to lye used in future by die
undertaking concerned as an indication of the geographical origin of that
category of goods; where there is currently no association in the mind of the
relevant class of persons between the geographical name and the category of
goods in question, the competent authority must assess whether it is
reasonable to assume that such a name is, in the mind of the relevant class of
persons, capable of designating the geographical origin of that category of
goods; In making that assessment, particular consideration should be given to
the degree of familiarity amongst the relevant class of persons with the
geographical name in question, with the characteristics of the place designated
by that name, and with the category of goods concerned;
It is not necessary for the goods to be manufactured in the geographical
location In order for them to be associated with it"

Based on the above principle, the Comptroller-General of the Intellectual Property Office
of the United Kingdom ("UKIPO") in the matter of consolidated actions in Cancellation
500096 by Elgin beverages against Trade Mark Registration No. 262870 in the name, of
Char (UK) Ltd. and Opposition 103965 by Char (UK) Ltd. against Application No.
262287H0 in the name of Elgin Beverages between the marks "OXFORD TEA/OXFORD
DRY ICED TEA" upheld that:
Para 26: Applying the principles of Windsurfing the first question to address is
whether OXFORD is associated in the mind of the genera) public with tea,
beverages (tea based), fruit tea, herb tea and iced tea."
"Para 34: I am mindful of the comments in Windsurfing that it is not necessary
For the goods to be manufactured in Oxford for there to an association. It is
dear that the goods are not manufactured in oxford and there is no evidence to
suggest that this may be the case in the future Further there is no evidence that
shows that there, is any form of association between Oxford and tea, or then: is
a likelihood of this. In view of the aforementioned, I conclude that even though
the goods are not manufactured in Oxford, in the minds of the average
consumer there is no association between Oxford and tea.
"Para 35: In view of the above, I dismiss the invalidation claim based on
Section 47(1) and Section 3(1)(c) of the Act in relation to all of the registered
goods."
Applying the principles laid down in the above matters, admittedly goods under the
trade mart GOA are not manufactured by the Respondent No. I in Goa. Also, there is no
association between GOA and GIN and moreover there is no association between GOA
and GIN in the minds of the consumers. Thus, applying the interpretation of Section
3(1)(c) (which is corresponding to Section 9(1)(b) of the Trade Marks Act, 1999) held
by the CJEU and further being held by UKIPO in the matter of "OXFORD TEA/OXFORD
DRYICED TEA", the trade mark GOA for goods being GIN, does not violate the
provisions of Section 9(1)(b) of the Trade Marks Act, 1999.
48. In National Lead Co. v. Wolfe 105 U.S.PQ. 462, the Court of Appeals on page 466
held that:-
"Thus one who manufactures paint in Holland cannot he restrained from selling
his product as "Dutch" paint any more than a watch manufacturer in
Switzerland can be prevented from selling ho "Swiss" watches. No use. of the
word "Dutch "in a geographical sense is involved here for neither appellant nor
appellees are marketing products or goods, likely to be understood by
purchasers as representing that the foods or their constituent materials were
produced or processed in the place designated by the name or that they are of
some distinctive kind or quality as the goods produced, processed or used in
that place."
49. The next contention of respondent No. 1 is that the alleged shift in law is further
negated by the fact that even in the judgments in Liverpool, Yorkshire, York and The
Imperial Tobacco Company (Supra), which were under the earlier. Statues, the Court
has recognized that certain geographical names can be registered as trade marks. For
example, while referring to such "registrable" geographical names it was observed
"Indeed when you are dealing with a matter which is a question of degree, it is
a question of fact, but Lord Justice Moulton in giving the illustration of Monte

Rosa cigarettes, and Teneriffe boiler plates, has given an illustration where a
geographical term has been used in such a collocation as clearly to indicate that
there was nothing geographical in its sense. As regards Monte Rosa cigarettes
the geography must cease, and it must be but a pet name for the cigarettes;
equally with the boiler plates and Teneriffe. But when we come to a large
trading centre like Liverpool, it seems to me that very different considerations
apply."
50. It is not denied by the respondent No. 1 that GOA is in fact famous for alcoholic
beverages including Gin. The respondent Proprietor has contended that GOA is famous
for other alcoholic beverages including Whiskey and Vodka, but it is not famous for Gin.
Whether a trade mark may serve in trade to designate geographical origin has to be
looked from the point of view of an average consumer.
51. It is admitted by the respondent that when the registration of both trademarks were
obtained, there was hardly any user of the mark GOA. The respondent, in fact, is relying
upon the user of the marks after grant of registrations. No disclaimer was imposed by
the respondent No. 2 at the time of registration.
52. An average consumer, who considers GOA to be a popular tourist destination and a
place where one can enjoy alcoholic beverages without burning a hole in one's pocket,
is bound to believe that GOA is popular for all kinds of alcoholic beverages including
Gin.
53. In practical, the consumer cannot check the statistics pertaining to manufacture of
different categories of alcoholic beverages in GOA before forming such an opinion. An
average consumer therefore associates GOA with all the alcoholic beverages including
Gin.
5 4 . Mr. Kane, learned counsel appearing on behalf of applicant submits that if the
principle of law purportedly laid down by the OXFORD case is held to be correct law
rightly, then name of any city/country, howsoever familiar and well known it may be
amongst the consumers, may be registered in respect of goods which are not
manufactured in those place/s. "Mumbai" can therefore be registered as a trade mark in
respect of coffee as Mumbai is not known to make coffee. "Delhi" can, for the same
reason, be registered as a trade mark in respect of pharmaceutical preparations because
it is not known to manufacture pharmaceutical preparations. The list is pending.
55. It cannot be admitted in the present case that the geographic meaning of the word
GOA is minor, obscure, remote or even unconnected with the goods or that the
purchasing public would never expect the Registered Proprietor's Gin to be originating
from the State of GOA. There is no force in the argument that since its goods are not
manufactured in the State of GOA, the impugned registered trade mark is
arbitrary/fanciful of the said goods. The said Judgment in NANTUCKET (supra) deals
with a similar contention in the following manner:
Since the mark CHICAGO is, thus, unregistrable even to a Chicago manufacturer
who is the first to use that name for shirts without a showing of distinctiveness,
one cannot accept, as urged by appellant, that the law recognizes better rights,
ipso facto, in a company not located there which [677 F.2d 104] happens to be
the first to use that name for shirts. It is simply illogical to say that CHICAGO is
descriptive of shirts if the manufacturer is located in Chicago, but arbitrary, if
he is not located there. The public is not aware of the actual locations of most
businesses. The public is aware of trade practice and makes, or is presumed

likely to make, a goods/place association in either instance. Nor is it any less
objectionable to a Chicago merchant if the term is used by a non-local rather
than another local merchant.
Our Analysis and Findings
56. We have gone through the records of the present case and also considered the
submissions advanced by the learned counsel for the parties at the bar. The issue which
falls for consideration is the interpretation of the provisions of Section 9(1)(b) of the
Trade Mark Act, 1999 as to whether the said provision prohibits the registration of the
trade mark which are in the nature of geographical names in generality or whether by
way of change in the language of the provision of Section 9(1)(b) restricts the
applicability of the provision relating to absolute ground for refusal only relating to the
marks or indication which may serve in trade to designate the geographical origin of the
goods.
57. For the sake of comparison of the two provisions, Section 9(1)(b) of the Trade and
Merchandize Mark Act, 1958 and corresponding provision in Section 9(1)(b) of Trade
Mark Act, 1999 are reproduced hereinafter:
Section 9:
Requisites for registration in Parts A and B of the register.
(1) A trade mark shall not be registered in Part A of the register unless
it contains or consists of at least one of the following essential
particulars, namely:--
(a) the name of a company, individual or firm represented in a
special or particular manner;
(b) the signature of the applicant for registration or some
predecessor in his business;
(c) one or more invented words;
(d) one or more words having no direct reference to the
character or quality of the goods and not being, according to
its ordinary signification, a geographical name or a surname or
a personal name or any common abbreviation thereof or the
name of a sect, caste or tribe in India;
(2) A name, signature or word, other than such as fall within the
descriptions in clauses (a), (b), (c) and (d) of sub-section (1), shall
not be registrable in part A of the register except upon evidence of its
distinctiveness.
Section 9(1)(b) of the of the Trade and Merchandize Mark Act, 1958, which is
reproduced as under:
(b) which consist exclusively of marks or indications which may serve
in trade to designate the kind, quality, quantity, intended purpose,
values, geographical origin or the time of production of the goods or
rendering of the service or other characteristics of the goods or service;

5 8 . From the reading of both the provisions together, it is clear that under the
provisions of Section 9(1)(b) of the Trade & Merchandize Mark Act, 1958, a trade mark
was not allowed to register in Part A if it contains any geographical name. As against
the same, the provisions of the amended Act, 1999 reads that a trade mark shall not be
registered if it consists exclusively of marks or indications which may serve in trade to
designate the kind, quality, geographical origin of the goods. Therefore, it is clear that
the Trade Mark Act of 1999 has structurally altered the provision of Section 9 including
its wordings with respect to registrability of the geographical names. Whereas on the
plain reading of Section 9(1)(b) of the trade & Merchandize Mark Act, 1958, it can be
seen that what were prevented from registration were the trade marks containing
geographical names as against the same, the reading of the provision of Section 9(1)(b)
of the Trade Marks Act, 1999 suggests that the prohibition with respect to registrability
is now attracted only in relation to marks or indications which may serve in trade to
designate the geographical origin of the goods.
59. In simple and plain words, what was earlier prohibited from registration is the trade
mark containing a geographical name per se however, there exists a comparative shift
in the approach and now what are prohibited under the Trade Marks Act is the marks or
indications which may designate the geographical origin of the goods. This departure
from prohibiting the geographical name per se in the earlier Act to preventing only
those marks which qualify the goods-place association test is in accord with the change
in approach with which the Trade Marks were registered internationally. This shift in
approach is not followed merely in India but also in US, UK and other common law
countries. However, this goods-place association test requirement is not merely
required to be satisfied in presenti but also the assessment is left for the future ability
of the geographical name or indication which may serve as a geographical origin of the
goods as we shall see in our discussion below.
60. If once sees the provision of Section 9(1)(b) of the Trade Marks Act, 1999, relating
to absolute grant for refusal, it is clear that the said provision is in consonance with
Article 3 of EU directive No. 89/104/EEC and also Section 3 of UK Trade Marks Act,
1994 both of the provisions which are similar in language
61. The provisions relating to the EEC directive of Article 3(1)(c) has been interpreted
by the European Court of Justice in the case of Windsurfing Chiemsee Produktions - and
Vertriebs GmbH (WSC) v. Bootsund Segelzubehvr Walter Huber & Franz Attenberger,
(2000) Ch. 523 (westlaw report) which has been relied upon by the respondent in the
present case wherein the ECJ made certain significant findings in its judgment relating
to prohibition concerning the registration of geographical name. The crux of the said
findings can be summarized as under:
(a) Article 3(1)(c) which is in consonance with Section 9(1)(b) of the Trade
Marks Act, 1999 (with certain words here and there, however, the operative
part remaining the same) is aimed at serving a public interest that the
descriptive signs or indications relating to categories of goods of services in
respect of which the registration is applied may be freely used by all and cannot
be reserved for one undertaking alone. (Kindly see para 25 of the report)
(b) With respect to signs or indications which may designate geographical
origin of category of goods in respect of which the registration is applied for,
the ECJ holds that the geographical names of such nature may be available in
public interest as associating the goods with that place leads to favourable
response of the consumer. (Kindly see para 26 of the report)

(c) The applicability of Article 3(1)(c) of the directive which is in almost pari
materia with Section (9)(1)(b) of the Trade Marks Act, 1999 is not merely
confined to registration of geographical name as a trade marks solely where
they designated a specific geographical locations which are already famous or
known for particular category of goods concerned and has already associated
with the minds of the relevant class of persons including trade and average
consumer but it is also applicable in the cases where such association is likely
to be possible or where the mark is susceptible to be designating the
geographical origin of the goods in the future and such connection can be
established in future also. The ECJ placed reliance to the language of Article
3(1)(c) of EC directive which states 'indications, which may serve to designate.
Geographical origin'. It is due to the usage of the wordings 'may serve to
designate' clearly makes the provisions applicable to geographical names which
are likely to attain association of geographical origin of the goods in the future
as well as against the one which are already known. (Kindly see paras 29, 30
and 31 of the report.)
(d) With respect to the mark's/geographical name's ability/capability to attain
such an association in the minds of the public in future, the ECJ has held that
the competent authority shall test the said geographical name by taking various
variables into account including the degree of familiarity amongst such persons
with that name, with the characteristic of the place designated by the name and
with the category of the goods concerned. Therefore, the assessment of future
association of the geographical name with the origin of the goods has to be
tested by inquiring as to how familiar the said name is amongst the consumer
and trade what are the characteristic of the said place designated by the name
and whether the said place has got any association with the category of goods
concerned or not and whether it is probable on account of taking into the said
variables into consideration any such association, in future. All these variables
can be taken into account on the existence of evidence available on record.
(Kindly see para 31 and 32 of the report.)
(e) Article 3(1)(c) doesn't prohibit, in principle, the geographical names which
are unknown to the relevant class of persons or unknown to the designation of
the geographical location and are unlikely to be believed that the category of
goods concerned originate from there. (Kindly see para 33 of the report)
(f) The connection of geographical location viz-a-viz the category of goods is
not solely dependent on the basis that the goods are manufactured there. The
said connection could be based upon "other ties" like the goods were conceived
there and/or designed in the geographical location and natural and other ties
which allows the public in general and trade to associate the goods with the
geographical origin of that place including familiarity of the place with certain
category of goods etc. Therefore, whether the goods are actually manufactured
there or not is not conclusive of the fact whether such geographical location can
be registered as a trade mark or not as there are other ties which the goods
may have with that location. (Kindly see para 36 of the report)
(g) Where the geographical name is already familiar as an indication of
geographical origin in relation to certain category of goods, the requirement of
furnishing the user has to be both long standing as well as intensive in order to
meet the requirement of distinctive character (Kindly see para 50 of the report).

(h) In assessing the distinctive character of the trade mark in respect of which
the registration has been applied for, the account may be also be taken into
consideration as to the market share held by the mark, how intensive the said
market share is, geographically widespread and long standing user of the trade
mark, the amount invested by the-undertaking in promoting the mark, the
proportion of relevant class of persons who identify the goods originating from
particular undertaking because of the mark, statement of Chamber of Commerce
and Industry, etc. If on the basis of all these factors, the competent authority
finds that the relevant class of persons for atleast significant proportion
identifies goods as originating from particular undertaking because of the trade
mark, then it must be held that the requirement for establishing the distinctive
character stands satisfied. (Kind see para 51 and 52 of the report).
6 2 . The above are the guidelines given by ECJ when the issue with respect to
registration of trade mark containing geographical name which is acting as an indication
of geographical origin or is capable of acting as an geographical origin (sic) for
consideration before the competent authority including the Court or Tribunal. The said
guidelines have been followed by the UK Courts and are also consistent with the
amendments carried out in the relevant laws including the law in India and also on the
interpretation of the plain reading of the Act.
63. In this connection, We would thus agree partly with the submissions of the counsel
for the respondent that though the law has changed from earlier Act of 1958. However
to say that the prohibition provided under section 9(1)(b) of Trade Marks Act, 1999
would extend only to the current geographical indications or the territories which are
famous for particular goods and services would be misreading of the provision. The
prohibition as per ECJ and We concur with its view shall also extend to the name of the
places which are familiar to the minds of the and there exists a likelihood of the name
of the place being used by many persons for the said categories of the goods and the
likelihood of that territory further associating the geographical origin of the goods. In
order to assess this position, the "other ties" of the goods vis-a-vis the territory or
geographical name are significant which creates it future potentiality to act as
geographical origin given the circumstances and evidences as it exists today. It is also
not necessary that the goods are manufactured in that territory alone for the purposes
of that assessment.
6 4 . Let us now evaluate the case of the parties in order to assess whether the
geographical name GOA has any likelihood to act in trade to denote the geographical
origin of the goods in particular "gin" for which the trade mark is registered. In this
connection, I am proceeding to evaluate the overall assessment of the word GOA both
in India as well as globally and also assessing the registrability of the said word GOA in
peculiar facts of the case as well as its legal sustainability of the same on the basis of
the parameters which are well defined and recognized. The same are as under:
Overall of Assessment of Evidence
• Familiarity of the name of GOA amongst the public
In this connection, the applicant has filed the material suggesting that
GOA is quite a familiar place amongst the public in India as well as
internationally.
By placing the reliance over the said material, it has been said that Goa
is well known for the beaches, coconut trees and sun and

internationally, it has been recognized on national geographic magazine
as well as on lonely planet a amongst top 10 night life cities of the
world. It has been stated that GOA has been recognized as best Indian
destination for Relaxation. The respondent on the other hand nowhere
disputes the familiarity of the name GOA with the consumers but
merely goes on say that at present that GOA is not famous for GIN
based product and thus the registration of the composite mark
containing the essential features including the feature of the GOA can
be sustained registration.
• Geographical significance of the GOA in relation to any alcoholic
preparation at present
Both the parties agree that GOA has already famous for the growth of
coconut and cashew nuts. The drink called feni which has got various
flavors but most popularly coconut and cashew nuts is recognized as an
authentic drink emanating from GOA. In fact, counsel for the
respondent argued both orally as well as in writing that though GOA is
famous for the alcoholic beverage Fenni but the same cannot become
distinctive towards the other alcoholic beverages. (Coconut palms are
abundant along the coastline of Western India and Goa, whereas the
cashew tree was an exotic species brought by the Portuguese from
Brazil to India. The feni consumed in South Goa is generally of a higher
alcohol content (43-45% abv) as compared to the feni produced in
North Goa. Commercially packaged feni is available at 42.8% abv.
(kindly see the link: https://en.wikipe-dia.org/wiki/Feni(liquor)).
• The notorietary of GOA as a place for consuming alcohols and spirits
of various kinds
Applicant has filed various figures and evidence to suggest that GOA is
famous for consumption of various kinds of alcohols and spirits. This
has been urged by the applicant by providing the following figures in
the evidence:
a) Consumption of alcoholic beverages in Goa is high. Goa
State Excise website shows that in the year 2011-2012, Goa
Government earned Excise Duty of Rs. 18,234.43 lakhs;
b) The number of men and women consuming alcohol is high
in GOA as compared to the national average. As per as survey,
44.7% GOAN men consume alcohol as against the national
average of 29.3%, whereas 4.2% GOAN women consume
alcohol as against the national average of 1.2%;
c) Goa has more than 50 distilleries. It is not surprising that
some of them in fact contain the word GOA in their respective
trading names;
d) Goa is one of cheapest places for alcohol loving travellers:
e) The 'Prince of Travel' website has listed GOA has one of the
cheapest places for buying alcohol. It says:

The good news about India for cheapskate drinkers is that a
few of its regions or states have low taxes (or no taxes) on
alcohol, along with very little regulation. One of the eastern
coast Pondicherry is one of these places, but the best place
with the most variety is GOA, on the west coast, where you can
get large and cold bottles of beer for under US2, even beach
bars and restaurants
f) Further, the website HOWFLUX has written an entire article
as to why liquor is so cheap in GOA.
g) UK based website www.johnthemap.co.uk has also written
about alcohol being cheap in GOA. h) The famous daily
newspaper DNA has written an article on the popularity of
alcoholic beverages in GOA. In particular, it highlights the
tourists' habit of sneaking out large amount of alcoholic
beverages from Goa to their home town.
• User of the third parties using the expression GOA as a composite
label in respect of other alcoholic beverages
a) It is a noteworthy fact that the respondent is not the sole
proprietor user of the expression GOA in respect of the
alcoholic beverages including Gin. It is noticeable fact that
there are third parties who were and having been using the
expression GOA as a part of the trade mark conveying the
similar idea as that of the respondent who claim to have been
using the mark GOA in respect of whiskey and other kinds of
alcoholic beverages which is used along with prefix and suffix
as a trade mark.
b) The Trade Mark No. 1081383 for the label of the GOA
special care containing various features which was applied on
18th Feb 2002 claiming the use of the user since 1.1.1992. The
said mark was applied by some company under the name Kedia
Castle Delleon Industries Ltd. originally and now after the
change of name, it stands in the name of Chattisgarh
Distelleries Ltd. The said mark has remained unchallenged and
the currently renewed by the proprietor as early as in the year
2017. The representation of the label of the mark is reproduced
as under:

c) It is equally noteworthy to mention that the said mark
contains a disclaimer/condition that "Registration of this Trade
Mark shall give no right to the exclusive use of the WORD
GOA". The said condition was imposed by the trade mark office
in the year 2004 when the mark was applied in the year 2002
claiming the user since the year 1992. It is thus evident that
the trade marks office/respondent No. 1 was following the
practice of imposing the conditions over the geographical
names even after 10 years of user claim and after the
enactment of Trade Marks Act, 1999. The another
corresponding fact which is essential to note is that the
respondent has not challenged the validity of the mark and
both the parties are co-existing on the register.
• Subsequent Registrations and applications of the trade mark
containing the expression GOA and/GOAN in respect of alcoholic
beverages as per the trade marks register
The search report of the trade marks office reveals that there are many
resgistrants of the composite labels containing the expression
GOA/GOA as a part of the label in respect of the other alcoholic
beverages: The position of the register in this respect can be
summarized as under:

All these applications and registrations are valid ones and apart from
the same, there are cases which are lying under opposition and also the
cases which are abandoned for non compliance of certain formalities
before the trade marks office. Those cases we have not taken into
consideration as at present, it cannot be said whether those applicants
would revive their applications. There are cases which are applied in
the name of GOA/GOAN in respect of mineral water and other
beverages We are however considering the cases which are applied and
registered in respect of alcoholic drinks including beers although they
are falling in different classes 32 and 33.
From the reading of the aforementioned registration and pending
application, the following position can be immediately discerned:
a) That there are parties who have registered and applied for
the registration of the trade marks containing the expression
"GOA" in respect of the alcoholic beverages of other types
including whiskeys and wines etc.
b) The reading of the marks like GOA SPECIAL, GOAN PRIDE
and GOAN Classic Dry Wine and GOAN Treasure would suggest
that all these registrants are trying to boast their products as a
speciality product from GOA. At least, this is idea emanating
from the reading of these marks and it shows that there is an
immense attraction in the minds of the producers puffing their
alcohols belonging to that GOA.
c) Likewise, the composite labels enlisted above would also
show that all these entities have shown beaches, beaches with

palm tree, sunsets upon their labels conveying the idea of
nothing else but the prominent geographical place GOA. In fact
the said labels of the respondent are also conveying the same
idea and is no more different in that sense. Thus, the cited
applicants and registrants intend to show that their product has
any connection with the territory of GOA which is famous for
its beaches, palm trees and sunsets.
d) The above applicant's and registrants of the composite
marks include the applicants and registrants that are distilleries
companies who are either belonging to GOA and also from
other parts of India.
e) Some of the players like that of the Chattisgarh distilleries
Ltd. had reapplied the trade mark in the year 2016 claiming the
user since the year 1992 and also showing the sale figures
since the year 1993 onwards as per the sale figures mentioned
in the evidence by way of the affidavit filed by them before the
trade marks. The total sales recorded in the said affidavit as
available online till date is deposed to be Rs. 389 crores 19
lakhs. Therefore, apart from the respondent, there are serious
contenders in the market who are using the word GOA along
with the device of palm tree, beach and sunset prior to the
respondent and having a substantial sales under the said
marks. (All the documents relating to the said mark can be
assessed from the trade marks registry's website which is the
eregister maintained by the trade marks, that is open for public
search and inspection)
f) It is also seen that the practice adopted by the trade marks
office in connection with the use of the composite marks and
word marks containing the geographical name is inconsistent
which is that in few cases, the trade marks office has imposed
condition on the no exclusivity over the mark GOA and in some
cases, some other type of condition has been imposed and in
few cases, there are no conditions that have been imposed by
the trade marks office.
All the above discerning points clearly go on to show that there are
numerous parties/competitors both prior to and alongside the
respondent engaged in the field of distilleries and selling of alcoholic
beverages other than Gin who are intending and aiming to boast their
products by using the expression GOA/GOAN as a part of the trade
mark as an indicator of the products source. The idea conveyed by all
these trademarks as noted above is clear indicator towards the famous
geographical place GOA which is famous for beaches and palm trees
and nothing else. This is though true in respect of alcoholic beverages
and may be for other products as well. However, since we are
concerned herewith the case qua alcoholic beverages and assessing the
ties of the said place and its potential future connection with the said
categories of the goods, our appreciation is confined to only the
connection with that category of the goods only.

• Distilleries in India hailing their alcoholic beverages emanating from
Goa
Apart from the distilleries that are originally operated by Goan citizens or belonging to
Goa, even the distilleries from other parts of India are also hailing GOA as a source of
origin for the their different kinds of alcoholic beverages. One of the whiskey Paul John
single malt is openly promoting its single malt whiskey emanating from GOA on its
website by claiming that it is emanating from goa. (See the website
https://pauljohnwhisky.com/en). Further an article on livemint.com which is the online
publication in its headlines reads "Three cheers to Paul John, Goa's best-kept secret"
again shows that the company is openly declaring that their single malt is emanating
from Goa. (See the link)
https://www.livemint.com/Sundayapp/156V8naRe266Gm6iE1RWQJ/Three-cheers-to-
Paul-John-Goas-bestkept-secret.html).
65. Another example is again of Chattisgarh Distilleries Ltd. which is belonging to the
state of Chattisgarh but is using the mark GOA's special with the device of the beach
and palm tree which conveys an idea that their whiskey is the one which is treated as
speciality of Goa. Now if one goes by the argument of the respondent's counsel that
Goa is currently famous for only Feni, then it may not be an appreciable to consider this
aspect, We would have agreed with the counsel for the respondent if we would have
been assessing only current position, but when one is measuring a potentiality of the
geographical name and its abilities to serve as a geographical origin for the category of
the goods, then this is again one of the significant factors showing the inclination of
Indians depending upon the familiarity of the name and attractiveness of the same on
account of it being famous-for having Alcoholic beverages and for that matter, the on
going tendency of Indian manufacturers of Distilleries products to boast their products
as that of Goa origin.
• The Special connection of Gin and Tonic water with India
It is now well recognized that Gin and Tonic water as a combination which have been
invented in India and the said fact has been widely popularized world over. This is
evident from the recognition of fact on various websites declaring the same position.
According to Wikipedia; The cocktail (Gin and tonic water) was introduced by the army
of the British East India Company in India. In India and other tropical regions, malaria
was a persistent problem. In the 1700s it was discovered by Scottish doctor George
Cleghorn that quinine could be used to prevent and treat the disease. The quinine was
drunk in tonic water, however the bitter taste was unpleasant. British officers in India in
the early 19th century took to adding a mixture of water, sugar, lime and gin to the
quinine in order to make the drink more palatable, thus gin and tonic was born.
Soldiers in India were already given a gin ration, and the sweet concoction made sense.
(https://en.wikipedia.org/wiki/Gin_and_tonic).
In fact an article in The Economic Times as recent as of 26th September 2018 having
headlines "How the global revival of gin drinking is manifesting itself in India" written
by Nayantara Maya Oberoi not merely explains Indian connection of gin drinking along
with tonic water but also the tendency of the manufacturers of the Gin to pay homage to
Indian cities by keeping the names of their Gin by using the names of cities as a part of
their brand names. In her words, the article reads" India is the world's fifth-largest gin
consumer, though gin is small potatoes compared with whiskey and rum sales. Cheap
compound gins, essentially ethanol with flavouring, are the biggest sellers, while
premium gins, hampered by import duties, account for a small share of the market.

Though many gin names pay tribute to India -- Bombay Sapphire, Jodhpur, The Star of
Bombay, Old Raj (the famed East India Company, now owned by a London-based
Indian entrepreneur, itself makes one, called East India.
(httpsy/economictimes.indiatimes.com/industry/cons-products/liquor/how-g lobal-
revival-of-gin-drinking-is-manifesting-itself-in-india/articleshow/65915738. cms)
• Prevalent use of GOA internationally in respect of GIN as a homage to the city
of Goa
As seen above, India has a strong connection with gin and tonic water and there exists
a tendency amongst the manufacturers and sellers to pay tribute to Indian city by
keeping their product name by using the name of the city of India as a part of the brand
name, Goa is amongst such name which is already used internationally for the GIN.
GOA London Dry Gin is a name for the Gin which is available in England as well as in
other parts of Europe. The claim of the manufacturers of GOA LONDON DRY GIN is that
the use of the said name is the homage to the city of India in view of the strong Indian
connection with that of Gin. (Kindly see
https://cocteleriacreativa.com/eng/ingredients/detail/1470/Goa_London_Dry_Gin). In
fact the manufacturers namely COMPANIAINTERNACIONAL DE NEGOCIOS SA (CINSA)
from Spain had also applied for the trade mark in India as a composite mark containing
the expression GOA LONDON DRY GIN. The said mark has been earlier abandoned on
account of some discrepancy and thereafter refused by the trade marks office on
account of pre-existing entries. In sum, the position is that internationally as well, Goa
is used and considered as a geographical name/city name which is paid homage for the
Gin which has its roots in India.
• Promotion of Goa in travel guides as a place to have a Gin on beach side
internationally
Apart from Indian connection of Gin and Tonic water and also prevalent use of GOA in
respect of Gin, there is a wide scale promotion of GOA as a place where it is worth
trying a Gin and Tonic water in popular travel guides. National Geographic Travel which
is considered to be having an extensive circulation across the globe due to its reach
through television and also through magazines physically as well online wrote an article
"Why You Should Sip Gin and Tonics When You're in Goa" by Margret Loftus on
1.4.2015 wherein it is recommended to have a gin at the beach of GOA at sunset time.
The reasoning given by the author is origin of gin and Tonic water from India. Thus,
though India has a connection Gin and Tonic Water but Goa as a place is considered to
be one wherein it is enjoyable to have the same. Likewise, in the same write up, there
are various drinks which are considered as famous and enjoyed in other respective
territories of the world like in Brazil, Cuba and Mexico.
(http://www.natgeotraveller.in/why-you-should-sip-gin-and-tonics-when-youre-in-
goa/).
The similar write up was published by national geographic earlier also with the title
"Top Ten Beach Drinks" by Paul Poplis on 8.7.2010 wherein Gin is said to be enjoyable
beach drink at the time of sunset of Goa. (kindly see https://www.
nationalgeographic.com/travel/lists/food-and-drink/beach-drinks/).
Further, there is another travel guide which is tripadvisor.com, on the said website,
there is a discussion amongst travelers from UK wanted to have gin with tonic water
and various enquiries have been raised in the discussion under the head Drinks in Goa.
(Kindly see https://www.tripadvisor.in/ShowTopic-g297604-i6045-k7014262-

Drinks_in_Goa-Goa.html)
Another article on dailymail.co.uk under the head "Getting away from the crowds on a
chic Goa beach holiday" written by Eiona Campbell in the year 2011, the author counts
the good experiences of Goa and one such experience was having a gin with tonic water
at the outdoor bar of Goa. (kindly see https://www. dailymail. co.uk/travel/article-
1343487/Getting-away-crowds-chic-Goa-beach-holiday.html)
• New Gin Manufacturers in India promoting GIN manufactured and distilled
from Goa
In addition to the connection of India with Gin, there are new Gin manufacturers in the
market in India who are also widely publicizing their gin distilled in Goa. They are
comparing their drink with the name HAPUSA gin and also Greater than Gin from Goa
with that of another popular drink AMRUT which is internationally renowned drink from
India. (kindly see
https://www.livemint.com/Companies/QIejOJxH0ylmMRFkqZ5B1O/Nao-Spirits-maker-
of-Indias-first-ever-craft-gin-brand-ge.html)
There is another article by the same manufacturer under the title" We may finally have a
homegrown good gin, thanks to a Goa based distillery" published in Hindu business line
wherein again the manufacturer again promotes Gin as homegrown from Goa. (the story
can be assessed at https://www.thehindu businessline.com/specials/luxe/leading-the-
ginaissance/article22203754.ecel)
66. From the above which are factual in nature, one can discern the following:
a) There are manufacturers and proprietors in India as per the trade marks
office database who are registered and are using the labels/composite marks
and trade marks containing the expression GOA prior to and also subsequent to
that of the respondent.
b) The class of persons/manufacturers with respect using the expression GOA
are not confined to Goa based distillers but others as well which include Indian
and international manufacturers and distilleries.
c) India has a strong connection with Gin and Tonic water.
d) Internationally, Goa is promoted as a place wherein Gin and Tonic water can
be enjoyed as per travel guide.
e) Goa is used as a part of the composite label of brand Goa London Dry Gin
which is available in England as well as in Europe and other parts of the world.
The said brand on account of international travel and easy dissemination of
information is accessible both to Indians and foreigners. In fact, the said
company has filed the trade mark applications in India showing its intention to
do business in India. The explanation given by the Company to use the word
GOA for Gin is that it is homage to the city of Goa in view of Indian connection
of Gin and Tonic water
f) Goa based distilleries are also boasting their products as GOAN's Pride
Goan's treasure etc. The applicant has filed evidence to show the documents
having Goa based distilleries.
g) There is a strong connection amongst Britishers and those who are aware of

British ruling India which include substantial segment of public that Gin and
Tonic water is from India and they recount their experiences in Goa and prefer
going there to have some Gin.
h) There is a tendency amongst the proprietors using the name of the
geographical place to pay homage to India based gin.
i) There are new entrants in the market who are promoting the Goa distilled Gin
as Home grown Gin from India.
j) Apart from Gin, in fact Goa is also hailed as a place emanating other drinks
like wine and whiskeys by other manufacturers in India.
67. The above noted attendant circumstances based on the available evidence which are
based on the records of the present case as well as the internet evidence available on
world wide web having wide circulation amongst substantial segment of public would
clearly go on to show that the "other ties" as contemplated by ECJ in the case of
Windsurfing (supra) based on the ability of geographical name in particular GOA in the
present case are potent enough to draw an inference that GOA has an ability to act as
geographical origin of various kinds of alcoholic beverages including GIN in particular
in future. The evidence suggests the potentiality in the name and its ability to act as a
geographical origin for the alcoholic drinks including GIN in future given the fact that
many manufacturers are already hailing GOA to convey the origin of their alcoholic
preparations including GIN as well.
6 8 . We do not agree with the submission advanced by the learned counsel for the
respondent that if currently the said connection is not there, that by itself is sufficient to
close the issue and the bar envisaged under section 9(1)(b) is not applicable. On the
other hand, we find that the evidence of GOA having special significance for beach
based drinks and GIN and Tonic water specially admired by public from foreign origin
who consider this as enjoyable at the Beaches of Goa is sufficient enough to draw an
inference that the members of the trade will attempt in future to create a gin or for that
matter other attractive alcoholic preparations which may signify GOA as a place of
origin. We also reject the submission of the counsel for the respondent that merely
because the law has changed, therefore there is no scope in law to attract such bar as
per the law. On the contrary, after fair reading of Windsurfing case (supra), we find that
the ECJ interpretation with which we respectfully agree mandates a competent authority
to do the overall assessment of the evidence so as to see if the geographical name at
present or in future has an ability to act as a geographical origin of the product in
particular. This is what exactly we have done with respect to our assessment of the
case. Thus, we are of the view that the bar envisaged under section 9(1)(b) is attracted.
69. We also reject the submission of the learned counsel for the respondent that the
conduct of the petitioner is unsatisfactory so far as the usage of the mark and its
application for the registration of the trade mark is concerned. Though it is correct that
there might be some kind of contradictions that would be existing in the stand taken by
the applicant for the rectification so far as the exchange of communications are
concerned, however by filing this petition and thereafter agreeing to disclaimer and
condition on non exclusivity of the word GOA being a geographical name in favour of
any proprietor, the applicant is calling upon this tribunal to bring the petitioner and
respondent at par to each other so that the rights of the respondent is no way superior
than that of the petitioner with respect to the exclusive claim of the word GOA is
concerned. This recourse is available to the applicant in as much as the applicant is

equally risking his own mark containing the expression GOA just like in the same way
as he is attacking the mark of the respondent. Thus, we do not find that the conduct of
the applicant and its manner of usage of the mark is fact relevant to this cancellation
proceedings when the applicant being a person aggrieved can approach this tribunal
and thereafter it is for this tribunal to make an overall assessment of the evidence with
respect to the ability of the geographical name to act as a source indicator at present or
in future. Since the other parties are also using the word GOA in the same manner and
the position of law with respect to the exclusive claim of the mark was not clear, the
applicant cannot as such be condemned on this ground when it is a matter of
adjudication by the tribunal. In any case, the conduct of the applicant may not be of
much relevance unless there are facts which prevents the applicant to approach this
tribunal which are missing in the present case. The cancellation jurisdiction and
assessment of the word on the touchstone of section 9 of the Trade marks act being a
matter of public interest, therefore, the initial locus in the cases of public interest is
merely confined to person aggrieved and it is for the tribunal to proceed further and
decide the dispute in hand. The conduct of the applicant/defendant otherwise may have
some role in the case of passing off and infringement suit but not in the challenge of
such a nature.
70. Apart from the parameters based on evidence, there are legal factors which also
compels us to arrive at the conclusion which we are arriving at due to the following
reasons:
a) Firstly, though the conduct of the applicant for rectification is not of such
relevance, but the conduct of the respondent who is the registered proprietor
has a definite role to play in assessing the respondent's claim as the proprietor
of the trade mark is bona fide or not. It may not be out of place to mention that
the respondent while arguing the matter before this tribunal, limit the
arguments by urging that the adoption of the mark GOA in respect to the Gin is
arbitrary in nature. In this context, the following facts relating to conduct of the
respondent are noteworthy:
• That the oppositions which the respondent filed against the third
parties which include in class 32 and class 33 applications, the claim of
the respondent while asserting its rights against third party oppositions
is that the applicant is the proprietor of the trade mark GOA in respect
of "alcoholic beverages". In fact, the opposition has been preferred by
the respondent against third parties for usage of the word GOA as a
part of the trade mark in respect of the various goods which include
alcoholic beverages of various kinds and even beers, water etc. Thus,
the respondent is making a broad based claim of the proprietor of the
trade mark GOA in respect of the alcoholic beverages where as it has
been argued to the contrary. It is now well settled that a proprietor
cannot claim a monopoly over a descriptive mark for the entire
classification of the goods when his user is confined to merely a
particular good falling in particular class. (See Nandhini Deluxe v.
Karnataka : Reproduce MANU/SC/0779/2018 : 2018 (75) PTC 209 by
Supreme Court of India) Thus, by arguing in a contradictory manner
before various fora, the respondent is having an ambitious aim of
preventing third parties from using the word GOA in respect of
Alcoholic beverages in general when the evidence suggests that there
exists a particular class of manufacturers both from GOA and outside
GOA who are using the marks containing the expression GOA as a part

of the trade mark. The respondent cannot be allowed to make a
contradictory claims of proprietorship in the manner done by the
respondent. The said fact is a relevant one so far as the public interest
aspect involved in the present case.
• The respondent although claims to be using the trade mark containing
the expression GOA since the year 1994 and claims 24 years of user
but no where furnishes the evidence since the year 1994. On the other
hand, as per the respondent's own saying in the respondent's counter
statement and written arguments, the respondent provides the sale
figures for 6 years of user from 2009 till 2015 though claims to be
using the trade mark since the year 2005 after obtaining the
assignment from its predecessor who as per the respondent was using
the mark since 1994. If one reckones the said user, then it can be said
that the user which the respondent claims to be is of 24 years when it
has actually been 6 years of user. Thus, the respondent has made
ambiguous assertions while claiming the distinctive character. This
aspect is essential in as much as even prior to the year 2009 since
when the respondent shows the user of the mark, there were 4 parties
who were having valid registration in their favour in respect of the
mark containing the expression GOA. The user of distinctiveness on
which the respondent lay great stress for the purposes of the retention
of the entry should also be assessed vis a vis the rights of the third
parties who are already having a valid registration in their favour and
whose rights shall be compromised by affirming such prior user claim
without any actual evidence of user being furnished by the respondent.
Therefore, the bald assertion on the part of the respondent that it has
been using the mark since last 24 years without actual user in
documentary form cannot simply be accepted merely by looking at the
date of the trade mark application or the user claim made in the
application.
b) Secondly, it has been argued by the respondent that the adoption of the
mark GOA by the respondent and its predecessor is arbitrary in nature. We find
inherent flaw in the argument preferred by the respondent when we peruse
through the labels that are subject matter of this dispute. The representation of
both the labels are already reproduced as under:
From the perusing of both the labels, it is clear that the first label which is the
subject matter of registration bears the mark Brihans along with the same the
expression GOA is written wherein the label provides the device of beach and
palm tree TWO in ONE Dry Gin and Lime is written therein. This is in
consonance with the concept of GIN and Tonic water for which the Goa is
widely promoted online and the said label clearly provides GOA and conveys

the idea of geographical origin. It may be noted that the usage of the word GOA
with a device of beach and palm trees conveys only one idea to the consumer
which is that the same has some relation whatsoever with the famous
geographical place namely GOA. This is due to the reason that device of beach,
palm tree couple with sunset are always associated with goa which has been
seen above. Likewise, the other label bearing BRIHAN's GOA SPECIAL DRY GIN
bearing No. 629645 in class 33 also bears a device of girl sitting with a swim
suit on the device of O with the blue colour water filled therein. This also
conveys some beach side sitting which is also associated with GOA. Therefore,
the plea taken by the respondent that the mark has been adapted arbitrarily to
distinguish the goods of the respondent and it has got Poro inherent signs of
distinctiveness is fundamentally (sic). On the contrary, it appears that the mark
has been adopted by the respondent's predecessor to convey to the customer
that it has some association with famous geographical place which is famous
for beaches, palm trees, sun and sitting across the beach. The idea conveyed by
both the labels suggests so. Thus, we reject the argument of arbitrary adoption.
On the other hand, even the other players in the market like Chattisgarh
Distilleries Ltd. amongst others have also adopted the mark GOA Special for
whiskey in the same manner which also denotes the sun palm tree and beach
signifying goa. Likewise, the goan distillers are also adopting the mark in the
same fashion. Thus, the position of the respondent in adoption and use of the
mark is no different from that of other parties who are denoting the origin of
the products as GOA which is self evident from perusal of the label itself. Thus,
the respondent is not correct in calling its adoption of the mark arbitrary when
the idea conveyed by the mark is itself so expressive and descriptive qua both
the labels and more so when the place is famous for the description provide
upon the label.
c) Thirdly, Whilst it may be correct that the wordings of section 9 of the Act has
undergone a change as pointed out by the counsel for the respondent to which
we have made the detailed discussion while going through the decision of
Windsurfing (supra). However, the proviso to section 9 and section 31 and
section 32 cannot be read in isolation. The Trade Marks Act has also provided
the ample safeguards so that the trade marks especially composite marks
containing descriptive elements may not be protected so far as the descriptive
part of the Trade Marks are concerned. This is a kind of counter balancing act
has been provided in the form of section 17 of the Trade Marks Act, 1999.
Section 17 is a provision which is aimed to be applicable in the cases where in
the marks contain several matters especially like composite trade marks.
Section 17(2)(a) and (b) provides that where the mark contains any part which
is not a subject matter of separate application or a part which is otherwise of
non distinctive character or of common to the trade character, then the
registration of the mark shall not confer any monopoly right of that part over
the whole. It is a kind of inbuilt statutory disclaimer wherein the legislature is
preventing the exclusive right over the part of the whole of the trade mark
which contains a non distinctive component. The similar section does not exist
in UK law to which comparison is made by the counsel for the respondent.
Thus, the requirement to establish the distinctive character in the law in UK in
the cases of applicability of absolute grounds for refusal unfettered and
uncontrolled by the provision analogous to section 17 of the Trade Marks Act,
1999. However, the position so far as India is concerned is not the same. The
combined effect of reading of section 9, section 17 and section 31 and section
32 is that though it may be correct that there is a presumption of prima facie

validity which is attached to the trade mark so far as the distinctiveness is
concerned. It is also true that the registered trade mark can also be preserved
so far as establish the distinctiveness qua post registration up till the
commencement of proceeding is concerned. However, the inherent defect in the
trade mark like the mark containing part which is a matter of separate
application and/or is a non distinctive component or common to the trade
component is concerned, the same is hit by the special provision dealing
specifically with the part of the trade marks under the Act which is section
17(2)(a) and (b), the requirement of secondary meaning cannot proceed to
wipe out the statutory bar which is registered proprietor is otherwise prevented
of claiming monopoly thereto on such part of the mark.
Applying the said proposition to the fact of the case, though it is true that
common to the trade or non distinctive marks hit by section 9 requirements can
be registered by showing the requirement of acquired distinctive character is
concerned, however the same can still be subject to the rigours of section 17
which prevents the proprietor to claim monopoly over the non distinctive
component parts or common to the trade parts. We find that GOA is
geographical word which has larger significance and strong connection of
various class of the public and thus involve a larger public interest due to its
potentiality to serve as an indication of the origin of certain categories of
alcoholic preparations, the strongest connection of which include Gin in
particular. Furthermore, it is a matter of fact that the Respondent has also filed
a separate application for the registration of trade mark GOA (word per se)
bearing No. 2325854 in class 33, thus again the subject two trademarks under
challenge if the Trade Marks Act 1999 is applied in a wholesome way are also
hit by the provisions of section 17(2)(a) and Section 17(2)(b) and the
monopoly in such a case can only be extended to the consideration of the label
as a whole without claiming any exclusive rights over the word GOA in
particular when it is of non distinctive character. The impugned marks so far as
it contains the expression GOA as a part of the composite mark thus attracts the
provisions of section 9(1)(b) and also section 9(1)(c) as it has also become a
common mark in trade of alcohol in India and internationally as well.
d) As regards the plea of applicability of section 31(2) which is furnishing of
distinctive character up till the date of registration of the trade mark is
concerned. It may be mentioned that factually the trade mark bearing No.
628446 was applied on 19.5.1994 claiming the use since 1.1.1994. However,
the registration of the said mark was issued on 20.7.2005. It is noteworthy to
mention that though the respondent claims the user since 1.1.1994. However,
the evidence filed before this tribunal along with the counter affidavit no where
furnishes any evidence by way of affidavit filed by the predecessor of the
respondent showing the sales of the products under the impugned marks
between the period 1.1.1994 till 19.5.1994 and for that matter between
19.5.1994 till 20.7.2005. Likewise, it is also not mentioned in the written
arguments as well. The earliest document relied upon by the respondent is the
deed of assignment between the predecessor Brihan Maharashtra Syndicate
Limited and Respondent No. 1 which is dated 5th October 2005 which is after
the registration of the trade mark. The earliest invoice relied upon by the
respondent No. 1 is also of Nov 2006. The earliest sales figures provided in the
counter affidavit is also from the year 2009-2010. In the case of challenge of
the impugned marks on the basis of violation of provisions of section 9(1) of
the Trade marks Act, 1999 wherein the requirement of the proviso to section

9(1) is to provide the distinctiveness until the date of the application and the
said requirement of showing the distinctiveness is then in turn stretched to the
date of the registration by virtue of applicability of section 31(2). The said
section 31(2) thus gives immunity to the registered trade mark. However, in the
present case, there is no material which has been relied upon by the respondent
No. 1 to avail that immunity by furnishing any evidence between the period of
pendency of the application until the date of registration. In such an event, the
registered proprietor/respondent No. 1 has failed to prove that the mark has
become distinctive even on the date of the registration. The evidence on the
contrary is post the registration which has been discussed separately. Rather
even in the written arguments filed before this tribunal by the counsel for the
respondent, the provision of section 31(1) is merely quoted and discussion
regarding the provision of section 31(2) is missing, however section 31(1) of
the Act with respect to prima facie validity which is a presumption of law is
available to the respondent only when it is not put to challenge serious enough
to shift the onus of proof to the registered proprietor. Here in the present case,
on the assessment of the evidence available on record, it has been found that
the provisions of section 9(1)(b) and (c) are applicable as per the discussion
done above in detail and distinctiveness of the mark has been seriously
questioned by the applicant. In such an event, the inability of the registered
proprietor to provide the evidence in support of the distinctiveness even until
the date of the registration which is up till 20.7.2005 stripes the immunity off
from the registered proprietor. The impugned marks so fat as the expression
GOA is concerned were non distinctive and could have been declared invalid as
an entry wrongly remaining on the register even on the date of registration as
they continued to contravene the provisions of section 9(1) of the Trade Marks
Act even on the date of registration.
e) With respect to the applicability of the provision of section 32, it is correct
that the registered trade mark which has been registered in breach of the
section 9(1) cannot be declared invalid if the distinctiveness during the period
between the registration and the commencement of the proceeding challenging
the registration is established. The respondent No. 1 has also filed such
evidence where the sale of the Gin is shown under the name Brihan's GOA DRY
Gin UP 35 from the year 2006 onwards by filing the invoices. Therefore, the
trade mark as such cannot be declared invalid. However the provision of section
32 has to be read along with section 17 and section 57. The power to rectify as
provided under section 57 is the duty of the registrar as well as IPAB in the
interest of purity of register and the public interest is also required to be kept
into mind. Power to rectify also empower the cancellation board to put any
conditions and limitations upon the registered trade mark which will not render
the mark invalid altogether but can also limit the scope and ambit of the
registration so as to avoid unnecessary exaggeration of monopoly claims by the
registered proprietor. The combined effect of reading of the section 17 with that
of 32 and 57 is as follows:
• The registration of the composite mark allows the exclusive rights to
use the mark as a whole. The same is the spirit of section 17(1).
• The registration of the part of the mark of the whole which are of non
distinctive character and/or are not separately registered cannot be
claimed monopoly thereof. (This is evident from the reading of Sec.
17(2))

• The imposition of condition that the use of the mark shall be as a
whole and without claiming any exclusive right over the word GOA in
the case of composite mark which is a part of the entire label
containing host of the features is in consonance with the spirit of
section 17(2) while retaining the validity of the trade mark to be used
as a whole as per section 32. (Even the registrar imposes the
conditions at the time of registration). During the course of the
arguments even the counsel for the respondent agreed that condition
can be imposed that the respondent shall not claim monopoly rights
over the word GOA in the state of GOA. This concession has already
been given in the written arguments filed by the respondent as well.
Thus there is no quarrel to the proposition that the conditions can be
imposed by the cancellation board while the mark as a whole shall
remain valid.
• Therefore, the imposition of condition qua the part of the trade mark
does not allow section 17 to militate against section 32 and both
operate in different field. Where as section 32 generally protects the
mark from violation of section 9 as such while furnishing the evidence
of use as such. Section 17 is concerned specially with cases of complex
marks in English law and composite marks containing various features
in the Indian context. It is noteworthy to mention that section 32 is
protective provision which protects the registration of the trade mark as
it has been granted. When as a matter of law as per section 17, the non
distinctive part of the trade mark falls outside the realm of the
registration, then section 32 can only protect the registration which is
granted as such with lawful rights flowing therefrom by combined
reading of sec. 28 read with section 17 but cannot proceed to
legitimize/fill in something which was unavailable at the time of grant
of registration. The sequitur of the discussion done in the present
paragraph is that imposing of condition on the impugned registrations
that registration of the mark shall not give the exclusive right to the
word GOA shall bring the registrations in consonance with the statutory
scheme as is evident from reading of section 9, 17, 31, 32 and 57 and
the registration shall still remain valid for the rights vested in the mark
as a whole. This was the effect of the registration even on the date of
the registrations when the new Act was already in force as the mark
was non distinctive character even on the date of registration, however
it requires reiteration in the form of condition upon the registration in
view of the respondent's claim before various forum with respect to the
exclusivity of the word GOA.
• In any case on the facts of the present case, there are only invoices
bearing the expression BRIHAN's GOA DRY GIN 35 UP which as per the
respondent's own saying is a label mark. The evidence that exists as
such is where the idea conveyed by the mark upon the label shows
beach and palm tree on the label and it is clear that the said Gin has
some connection with the geographical name GOA. There is also an
added matter on the label including the mark BRIHAN'S which is also
visible to the consumer and the other features including the slogan
"TWO in ONE" amongst others which are also in the nature of the
descriptive matters. The same is also the position with the other label
as well. Thus, the impression given by the two labels is combination of

various types of descriptive matter and brand name BRIHAN's
subsisting on the label. The relevant perception of the public when they
see BRIHAN's GOA label as a whole and the assessment whether they
relate the word GOA with that of the respondent alone or as a matter of
geographical origin of the product and what impression the label gives
in the mind of the public is missing and no evidence has been lead to
this effect. This is more so when the primary idea conveyed by it of a
geographical origin of the product as the same is evident from the
labels themselves. This brings even the establishment of distinctive
character in doubt so far as the word GOA per se is concerned. It is
questionable then whether the consuming public considers overall label
as a distinctive which is combination of various variables and matters
subsisting on the label or by presence the word GOA alone on the
label. Therefore, it is difficult to say whether so far as the word GOA
word per se is concerned, the immunity under section 32 is available at
all. That is another reason that the imposition of condition is
appropriate in the present case considering that the nature of evidence
available on record is merely the invoices which is admittedly a
composite label. This will retain the validity of the mark as a whole and
keep the claim of the registration within the four corners of the law
which is in consonance with the spirit of the Trade Marks Act, 1999 and
simultaneously it will also not violate the provisions of section 32 of
the Act as well. This is in addition to our finding that the provision of
section 32 cannot militate against statutory bar of section 17(2) of the
Act.
f) As regards the argument that the word GOA is a prominent feature, the
question that it is of distinctive character or not and whether it is capable of
serving a geographical origin of particular category of goods is altogether a
different question which requires a consideration distinct from merely calling as
one of the essential feature of the mark. There are features existing on the label
that are prominent enough yet they are either descriptive or non distinctive in
character. The assessment of the same is the dependent upon the overall
impression given by the marks in the eyes of the public and other
considerations and factors involved including the nature of the word mark and
the requirement of the same in trade and the familiarity of the name to the
public qua the said products etc as discussed above. The requirement of user as
cautioned by ECJ in the case of Windsurfing case (supra) is an intensive and
long user. This precautious approach of intensive and long user is also required
to be balanced qua the legitimate rights over other proprietors whose
entitlement to use shall be affected by the affirmation of the registration on the
basis of the such evidence. In the present case, the respondent has not shown
the evidence of user prior to the date of application and also until the date of
the registration despite having onus to show as per the proviso to section 9 as
well as section 31 of the Act. The respondent rather proceeded to only show
subsequent evidence until the date of the commencement of the present
proceedings. The significant fact which is noticeable is that by that time, there
were already more 3 to 4 serious contenders as per the records of the trade
marks office came into the picture with respect to usage of the word GOA as a
part of the trade mark with respect to wine, whiskeys etc. If one leaves few
invoices and goes by sales figures, the respondent is showing the sales
seriously from 2009 to 2015 which is of 6 years that further shrinks the period
of evidence. In such a scenario, the fact that had the familiarity of the word

GOA would have been less and the usage of the word would have been rare in
the industry, then the registration could have been affirmed easily on the basis
of such subsequent or post registration evidence. However the position is not
such in as much as the registration dates, user dates and evidence furnished by
few of the proprietors including Chattisgarh Distilleries Ltd. in respect of the
GOA Special whiskey label as per the evidence by way of affidavit available on
the records of the register shows more intensive and long user since the year
1993 onwards by providing the sales figures on similar lines than that of the
respondent. The claim made by the respondent by filing the opposition against
third parties, the respondent is already preventing the third parties by claiming
its registration to be extended to "alcoholic beverages" and even filing
opposition against the proprietors using the word GOA as a part of the trade
mark in respect to the goods like whiskeys, beers, water etc. So, the idea
appears to be that respondent intend to have an exclusivity over the word GOA
per se when simultaneously there are proprietors using the word as composite
labels having more intensive and long users and even prior to that of the
respondent.
• As regards the mark of Chattisgarh Distilleries Ltd., earlier owned by
one M/s. Kedia Castle Delleon Industries Ltd., it has been submitted by
the applicant in the records of the present case that the said party filed
an application for registration of a trade mark label containing the word
GOA as its leading, essential and memorable feature under Application
No. 1081383 in class 33 in the year 2002 in relation whiskey, gin, rum
brandy etc claiming the user since 1.1.1992 prior to that of the
respondent. The representation of the label is as under:
• M/s. Global Technology & Trademarks Ltd. filed the opposition

against the said application under No. BOM-190394. While dismissing
the said opposition for want of prosecution, the Registrar of Trade
Marks imposed a condition of disclaimer on the word GOA. The relevant
paragraph of the said Order is reproduced here in below:
"Since 'GOA' is purely geographical in nature being the name
of one of the prominent states of India, the same cannot be
made subject of trade mark. The applicants cannot be allowed
to claim any rights in 'GOA'. Accordingly, application No.
1081383 in Class 33 is accepted subject to the condition that --
the applicants shall have no rights in the word/device 'GOA'
appearing on the label."
By placing reliance on the aforesaid order of the registrar, it has been
contended by the applicant that even the parties using the mark GOA as
a part of the label in respect of whiskey even prior to the user of the
mark by the respondent have a disclaimer over the expression GOA in
respect of their registration. It's a matter of the fact that the said
registration is still valid and the said proprietor has also applied the

mark in the year 2016 as well as noticed above and is thus an active
player in the market.
Having said that, it does not mean that those proprietors should get the
word GOA per se registered in their favour or get the exclusive rights
over the same in as much as this will also disturb the position as it
exists currently. It is rather a balancing act where the cancellation
board should pass the direction to the trade marks office to issue a
condition in all future matters with respect to usage of the word GOA
as a part of trade mark that no exclusive rights shall be accorded to
usage of the word GOA as word per se. Going by that, the fitness of
things require that in order to maintain the purity of the register and to
protect the legitimate rights of the already subsisting registrants and
also the ones who are potentially interested in using the word GOA as a
part of the trade mark, the condition with no exclusivity to the use of
the word GOA seems to be the more apt approach in the given facts of
the case.
g) The balancing of the rights of the parties happen even by considering the
provision relating to concurrent right as provided under section 12 of the Trade
Marks Act, 1999. As already seen above, the rights claims by the proprietors are
even prior to that of the respondents containing the composite labels with
features of palm tree, beaches etc. The respondent has been very selective in
filing the oppositions against third parties in respect of various drinks but never
challenged the registration of the prior manufacturers and may not be able to
do so as well as per the law. However, the consequence of the same is that all
the proprietors including other registrants have the rights concurrent and
coextensive to each other. The said rights cannot be disturbed by giving the
exclusivity to the one right holder over the geographical name whose user is
subsequent to the serious contenders claiming prior rights. Rather, the
balancing can be done by invoking section 12 (which empowers the registrar to
register similar marks by imposing conditions and limitation as he deems fit)
and the scheme contained therein by putting conditions and limitations on the
impugned registrations so as to bring the rights of the respondents at par with
others.
h) As regards the interim orders relied upon by the respondent, I tend to agree
with the submission canvassed by the applicant that most of the interim orders
are ex-parte orders which resulted into the settlement of the case between the
parties under the provisions of Order 23 rule 3 CPC. There is no finding of fact
in such interim orders wherein the overall assessment of the distinctive
character is made in an in-depth analysis which may persuade this court to rely
those ex-parte orders to reject this cancellation action based on the violation of
the provisions of section 9(1). Rather, on going through the orders relied upon
by the respondent, there is only order which is detailed enough where in prima
facie view has been expressed by the Delhi High Court on the contest of both
the parties is the case titled as Radico Khaitan Limited v. Brima Sagar
Maharashtra Distilleries Ltd. pronounced on 15th October 2014 passed in
CS(OS) 1572/2013. In the said order, the learned single judge of the Delhi
High Court in para 76 of the report observed thus:
"76 Even if some words comprised in a mark are generic still the mark
taken as a whole can attain distinctiveness of the product of the

proprietor. For example the words "premium and whiskey" may be
generic words but when coupled with the other words like "Brihan's"
then the mark as a whole Brihan's Premium Whisky would be capable
of distinctiveness. More so when it is registered trade mark"
This statement of law was expressed by the learned single judge while
assessing the distinctiveness of the mark BRIHAN's Premium Whiskey label. The
learned judge agreed that the mark as a whole can be distinctive leaving aside
the generic words in the mark due to the overall impression given by the mark.
This is exactly the finding we are arriving at para (e) and (f) above by
assessing the evidence in the present matter due to the special reasons which
we are giving in the present judgment. This again affirms that the approach we
are following does not violate section 32 of the Act as the registered trade mark
as a whole is preserved as against giving monopoly over the non distinctive
component of the label.
With respect to the usage of the word GOA, the learned single judge observed
as under:
"99. The word GOA is a geographical name and in terms of the law laid
down in the cases of High Tech Pipes Limited (supra) and Sundar Nagar
Association (supra), a name originally purely geographical in its
significance may become associated with the plaintiffs goods or
services that its use on its own as a trade mark or name without
adequate distinction will amount to passing off, especially if it is used
in conjunction with get up or other indicia similar to that of used by the
plaintiff"
We are again of the same view that the remedy of the passing off shall be with
the available to the respondent if in case anyone tries to encroach upon the
rights of the respondent by using the deceptive means by adopting the
deceptively similar mark and or get up and the same shall depend upon facts of
each case.
With the respect to exclusive right to the use of the word GOA, the finding was
recorded by the Delhi High Court at para 100 which reads as under:
"100 The word GOA by itself may not be capable of protection as a
trademark but when coupled with the mark BRIHAN'S the mark prima
facie becomes distinctive. The fact that the BMSS had adopted the word
BRIHMA'S as a prefix to the word GOA shows that it was aware that it
could not use the mark GOA with the prefix BRIHAN'S as the same
would be deceptively similar. The words BRIHAN'S GOA and BRIHMA'S
GOA are also deceptively similar. The fact that the Defendant is
claiming to be a successor from BMSS and is not claiming any
independent right to the said mark, prima facie establishes that the
Defendant cannot also use a deceptively similar mark."
The judgment of 15th October 2014 passed by the Delhi High Court was
challenged before the Division Bench of Delhi High Court in FAO(OS) 458/2014
wherein vide order dated 13.1.2016 passed by the Division Bench, the court
proceeded to record the application under order 23 rule 3 CPC filed by both the
parties to the suit and appeal before the appellate court. While recording the
settlement by the Division Bench of the Delhi High Court, the learned court in

para 14 of the order observed the following about the finding arrived at para
100 of the order of the learned single judge:
"Concerning the observation made by the learned single judge in para
100 of the impugned decision, relevant para whereof has been noted by
us in paragraph 6 above, lest it causes any prejudice to M/s. Radico
Khaitan Ltd., we declare that the said observation would not be binding
on M/s. Radico Khaitan Ltd. for the reason it finds an expression of
tentative opinion formed by the learned single judge while deciding an
application for an injunction. It cannot be equated as determinative of
finding of law against the appellant"
The reading of the aforenoted observation of the Division Bench in the appeal,
it is clear that the court has merely observed that the finding recorded in para
100 is an expression of a tentative opinion and that's why it cannot be
considered as a finding of law against the appellant. On the other hand, in the
facts of the present case, we upon overall assessment of the evidence lead by
the parties and also the evidence as available on the web and eregister arrived
at the same conclusion which is that the distinctive of the word GOA as word
per se is questionable so far as its claim of exclusive rights is concerned by the
respondent as per the reasons and findings given in the present judgment. We
however, concur with the view of the Delhi High Court as recorded in para 76
and para 99 of the judgment as reproduced above which was not even upset by
the Division Bench in an appeal. Our independence conclusion is also in
consonance with the view expressed by the Delhi High Court as recorded in
para 76 and para 99 though on appreciation of evidence and the legal position
as against merely a tentative view which was earlier recorded by the Delhi High
Court.
It is to be noted that the said findings in the above case are more recent and
thereby also affects the reliance of the previous ex parte interim orders and
settlement recorded by the courts earlier which may not be of much assistance
to the respondents as on date.
i) As regards the provisions of section 30 of Trade Marks Act, 1999
relied upon by the respondent is concerned, the same is misplaced in
as much as the court is not concerned with the infringement action and
the exceptions thereto but the scope and extent of the monopoly rights
claimed by the respondent in its registered trademarks/labels. The
exception to the infringement provision which are in the nature of
safeguards or defence to an infringement action cannot be read as a
defence to a cancellation action which is based on entirely different
scheme. The justification that the defence to an infringement is
provided under section 30 will not be a justification in law to defend a
registration which is alleged to be in violation of the provision of
section 9, the purpose of which is to protect public interest in general
as per ECJ decision and well settled law in this country. Therefore, we
reject the said submission.
71. The above are thus legal factors in addition to the assessment of evidence carried
out by us which also enables us to arrive at the same conclusion which arrived earlier,
which is that the provision of section 9(1)(b) and also section 9(1)(c) are attracted in
the present case as the word GOA is capable of serving a geographical origin of the

categories of the goods which include Gin in particular and to the extent the said mark
has been incorporated as a part of the label including the device of palm tree, sun and
beaches which gives an impression to the minds of public to GOA, the prevalent use of
the said signs and indications by the traders as a part of the label by Goan distilleries
and other traders and manufacturers for the goods like whiskeys, wines etc leads us to
also say that the said practice is bona fide and in some way appears to be established
practice in the trade as the drinks are enjoyed at the beach side which is evident from
Travel guides and Gin has a special reference as beach drink with a connection in Goa.
For all these reasons the provisions of section 9(1)(b) and Section 9(1)(c) are attracted.
72. So far as the establishment on distinctiveness part as per proviso to section 9 is
concerned, in the absence of the evidence, when the onus was on the respondent, we
infer that there exists a violation of the proviso at the time of the registration of the
trade mark and the same is the position with respect to applicability of provisions of
section 31(1) and section 31(2) is concerned. Therefore, until the time of registration,
both the registrations are in violation of section 9(1) of the Act. Rather, the reliance of
the respondent to section 32 which is in the nature of post registration distinctiveness
itself affirms the position as is evident from the plain reading of the section 32.
7 3 . With respect to the applicability of section 32, we have already observed that
though the provision is applicable but we have expressed our doubts to the
establishment of the distinctive character of geographical name as Word per se as there
is no promotional material and advertisement campaign that is available and rightly so
as alcohol beverages are not promoted. However, the other means of advertisement as
stated by the respondent in its written arguments is also a bald assertion and no where
informs the tribunal about the ability of the Goa to act as a sole source indicator
towards the respondent product. This is more so in view of our observation above that
the provision of section 32 can be applied by preserving the mark as a whole and yet
imposing a condition with respect to non exclusivity of the word Goa in favour of the
respondent in view of the special reasons provided by us in the peculiar facts of the
present case. In that light of the matter, we are inclined to the impose the conditions on
the registration.
74. It is a settled law the jurisdiction provided under section 57 which is in pari materia
to section 56 of the old Trade and Merchandise Marks Act of 1958 is based on public
interest and the duty of the cancellation tribunal is act in interest of the purity of the
register as against the provision of section 47 which is in the nature of private interest.
This has been observed by Supreme Court in the case of Hardie Trading Ltd. v.
Addisons Paints & Chemicals Ltd., MANU/SC/0705/2003 : (2003) 11 SCC 92 : 2003
(27) PTC 241 (SC) wherein Hon'ble Ruma Pal J observed as under:
"30. The phrase "person aggrieved" is a common enough statutory precondition
for a valid complaint or appeal. The phrase has been variously construed
depending on the context in which it occurs. Three sections viz. Sections 46, 56
and 69 of the Act contain the phrase. Section 46 deals with the removal of a
registered trade mark from the Register on the ground of non-use. This section
presupposes that the registration which was validly made is liable to be taken
off by subsequent non-user. Section 56 on the other hand deals with situations
where the initial registration should not have been or was incorrectly made. The
situations covered by this section include: (a) the contravention or failure to
observe a condition for registration; (b) the absence of an entry; (c) an entry
made without sufficient cause; (d) a wrong entry; and (e) any error or defect in
the entry. Such type of actions are commenced for the "purity of the Register"

which it is in public interest to maintain.
(Emphasis Supplied)
The statement of law laid down in the case of Hardie Trading (supra) was further
reaffirmed by the Supreme Court in the case of Kabushiki Kaisha Toshiba v. Tosiba
appliances, MANU/SC/2223/2008 : (2008) 37 PTC (SC).
75. Likewise, the violation of provisions of section 9(1) which are in the nature of signs
and indications that may serve as geographical origin of the goods either in present or
in future is aimed at protecting public interest with the larger public policy, that the said
signs and indications are freely available to all and should not be reserved for any
undertaking alone, (ECJ view on the said point while interpreting pari materia provision
of Article 3(1) in the case of ECJ at para 25 of the report as analyzed above).
Accordingly, the interest of the public is required to be protected vis a vis the private
interest of the proprietor.
76. We have already come to the conclusion that the evidence in the present case is not
persuasive enough to allow us to reserve the word singularly for the respondent alone
and our special reasons recorded above are evocative of the said view. However, just to
recapitulate, the class of public who are having connection in the minds or can establish
future connection in their mind with respect territorial origin of gin by using the word
Goa is very widespread and diverse. The said class of persons include:
a) Goa based distilleries who are currently manufacturing and selling their
alcoholic beverages by using the names containing the expression Goa/Goan as
one of the feature of the brand name. The same is applicable for future
distilleries operating in Goa as well.
b) The manufacturers in India and in other countries who are using the
composite marks and marks containing the expression GOA prior to that of the
respondent and/or registered and using the marks for their alcoholic beverages.
c) The public in general which normally associates beach drinks like Gin and
tonic water which is the idea conveyed by Gin and Lime as that of the
respondent label with Goa only.
d) The international manufacturers who have tendency to adopt the names of
the cities as a composite part of their trade marks to pay homage to the
territory of India as an origin of gin and tonic water.
e) The proprietors and manufacturers of Gin who are new entrants in Goa and
hailing Goa as land of homegrown Gin and their possibility of using GOA as
part of their brand name in some way or other in a dissimilar manner than that
of the respondent so far as get up part is concerned.
f) Public confusion in their minds by giving a registration of the GOA word per
se to a single entity like respondent herein which will give unnecessary edge to
the respondent vis a vis other manufacturers in the market when aim of the all
was to associate their products by portraying that they are emanated from
geographical region of Goa.
77. For all the reasons, the interest of public in the present case is overwhelming and
outweighing which is compelling enough for this tribunal to lean towards the view
relating to imposition of condition that "Registration of the label will not exclusivity of

the Word Goa" as against holding that the word per se GOA can exclusively used by the
respondent to the exclusion of others. This will also free the bona fide traders who are
using GOA as a part of their label in respect of different goods like water, beer,
whiskeys etc from the trammels of the oppositions which the respondent has instituted
even though in all other respects the marks as a whole are different. Further, the
imposition of this condition and direction will be in the interest of the purity of the
register as it will make the practice of the trade marks office more consistent and will
not give unnecessary exaggerated monopoly to the proprietor by reserving the familiar
geographical name only to one entity.
78. Lastly, There are judgments relied upon by the parties wherein the judgments cited
by the applicant are mostly, no doubt, related old law which have been distinguished by
the respondent to some extent. Likewise, the judgments are relied upon by the
respondent wherein geographical names are allowed to be registered. All these
judgments are not discussed at length in as much as the enquiry in each case is
dependent upon the assessment of evidence with respect to ability of the geographical
name serving as a origin of the category of the goods. The landmark judgment relied
upon by the respondent to urge that there is a change in law decided by ECJ in the case
of Windsurfing (supra) has been discussed at great length and the conclusions and
guidelines passed therein are analyzed and reaffirmed and assessment has been made
on the overall assessment of the geographical name as per the parameters laid down in
Windsurfing (supra) and also legal factors emerging from the scheme of the Trade
Marks Act, 1999. Therefore, the rest of the judgments which are based on more or less
assessment of the evidence are factual in character and are distinguishable on the basis
of the evidence available in those cases. The judgment passed in the case of
Windsurfing case has also been approved by the courts in India including Bombay High
Court in the case of Pidilite Industries Ltd. and Anr. v. Vilas Nemichand Jain,
MANU/MH/2394/2015 : 2015 (64) PTC 185 (Bom). In any case, the judgment is
Windsurfing (supra) is passed interpreting pari materia provision has direct bearing to
the interpretation of the provision of section 9(1)(b) involved in the present case.
Accordingly, We hereby pass the following directions:
a) ORA No. 271 & 227/2015 are partly allowed to the extent that the impugned
registration Nos. 628446 & 629643 in class = 33 are put to the condition that
the registration of the label mark shall not give any exclusivity of the word GOA
only. The respondent No. 2 shall amend the register in relation to the above
mentioned registered trademarks of the respondent No. 1 forthwith.
b) The respondent No. 2 is directed to issue conditions in accordance with
directions contained in this judgments for all matters/applications which are
considered by the trade mark office in respect of goods relating to alcoholic
beverages after passing of this judgment relating to the labels and word marks
wherein the word GOA forms one of the feature.

Neutral Citation Number: 2022/DHC/004808
a $~
% Date of Decision: 14th November, 2022
+ FAO-IPD 43/2021 & CM APPL. 32440/2016 (Stay)

b
M/S PORNSRICHAROENPUN
CO. LTD & ANR. ..... Appellants
Through: Mr. Shailen Bhatia, Ms. Vibhuti
Sharma, Ms. Snehil Bhatia, Ms. Janhvi
Chadha, Mr. Jay Shah, Mr. Anuraj
c
Tirthankar and Ms. Atiga Singh, Advocates.
versus
M/S L’OREAL INDIA

d PRIVATE LIMITED & ANR. ..... Respondents
Through: Mr. Akhil Sibal, Senior
Advocate with Mr. S.K. Bansal, Mr. Ajay
Amitabh Suman, Ms. Asavari Jain,
Ms. Deboshree Mukherjee and
Ms. Aiswanya Debadarshini, Advocates.
e
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
f JYOTI SINGH, J.
1. Challenge in the present appeal is laid to an order dated
30.03.2016, passed by the learned Trial Court in TM No. 90/2014,
whereby the application under Order XXXIX Rules 1 and 2 CPC,
g
1908 has been disposed of and Appellants have been restrained from
using the trademark ‘HAIR SPA’. Appellants herein are the
Defendants before the learned Trial Court while Respondents are the
Plaintiffs and the parties are hereinafter referred to by their litigating
h
status in the present appeal.

Digitally Signed FAO-IPD 43/2021 Page 1 of 44
By:KAMAL KUMAR
Signing Date:16.11.2022
19:15:09
a 2. Appellant No. 1, having its registered office in Thailand, is

stated to be carrying on a well established business as manufacturer,
marketer, exporter and/or dealer of cosmetics and hair care products
under the trademark ‘BERINA’ for the past several years. Products of
b Appellant No. 1 are sold in Asian countries viz. Thailand, Singapore,
Malaysia, India, etc. Appellant No. 2 is engaged in importing, selling,
marketing and/or distributing various cosmetics and hair care
products, manufactured by Appellant No. 1 for many years.
c
3. It is averred by Appellant No. 1 that Ms. A. Ngun
Luechaputiporn, a Thai National is the first and original proprietor of
the trademark ‘BERINA’, which is used in relation to cosmetics and
hair care products and is registered in India in Class 03. As a
d
registered proprietor, she granted a licence to Appellant No. 1,
authorising it to use the trademark in relation to cosmetics and hair
care products.
e 4. On 29.08.2006, Appellant No. 1 sent the first consignment of
the products bearing the mark ‘BERINA’ HAIR SPA to Appellant
No.2, for sale in India. The products were advertised in March, 2011
in a magazine wherein advertisement of Respondents’ product was
f also published and despite this knowledge, no action was taken for
over three years by the Respondents.
5. In November, 2014 Respondents filed a suit for permanent
injunction against the Appellants alleging infringement of trademark,
g
passing off, etc. On 20.11.2014, the learned Trial Court passed an ex-
parte order of injunction, restraining the Appellants from using
‘BERINA HAIR SPA’. Vide impugned order dated 30.03.2016, the
application under Order XXXIX Rules 1 and 2 CPC, 1908 was
h
disposed of and the interim injunction was confirmed by the learned
Trial Court.
By:KAMAL KUMAR
19:15:09
a 6. Appellants have laid a siege to the order of the learned Trial

Court in the present appeal on the following grounds:-
A. Trial Court has erred in observing that counsel for the
Appellants had referred to certain judgments during the course
b of the arguments but no such judgments were filed on record.
The observation is contrary to the record of the Trial Court
inasmuch as the judgments were filed along with the written
submissions and the certified copy obtained by the Appellants
c
would evidence that the written submissions run into 38 pages
followed by judgements which were 11 in number, running into
219 pages. Appellants have filed certified copies of the
judgments to substantiate their stand. The erroneous observation
d
is also a pointer to the fact that the Trial Court has rendered the
impugned findings without looking into the judgments filed by
the Appellants and consequently the propositions of law
e enunciated therein which has caused grave prejudice to the
Appellants’ case.
B. Appellant No. 1 manufactures, markets, exports and is a dealer
of cosmetics and hair care products under the trademark
f ‘BERINA’. One Ms. A. Ngun Luechaputiporn, a Thai National
is the first and original proprietor of the trademark ‘BERINA’,
which is used in relation to cosmetics and hair care products and
is registered in her name in India in Class 03. She has granted a
g
licence to Appellant No. 1 authorising it to use the said
trademark in relation to cosmetics and hair care products and
the goods of the Appellants are identified by the trademark
‘BERINA’. The goods manufactured by Appellant No. 1 bear
h
the trademark ‘BERINA’ followed by description or nature of
products viz. bleaching preparations, hair colour, hair
By:KAMAL KUMAR
19:15:09
a straightener cream, hair spa, heat protector, hair setting

shampoo, conditioner, etc. The expression ‘HAIR SPA’ is used
merely as a descriptive phrase and not as a trademark and thus
no action for infringement qua the said mark can lie against the
b Appellants.
C. The expression ‘HAIR SPA’ is generic and commonly
understood and used by consumers as a treatment for hair and
denotes the kind, quality, nature and intended purpose of the
c
goods of the Appellants. In trade usage, running across the
entire spectrum of goods/services, trademarks of many entities
are usually succeeded by generic words HAIR SPA, HAIR
COLOUR, etc. The word ‘HAIR’ in its plain dictionary
d
meaning is ‘any of the numerous fine, usually cylindrical,
keratinous filaments growing from the skin of humans and
animals’. Similarly, the dictionary meaning of the word ‘SPA’
e is ‘mineral spring or a luxurious resort or hotel’. Therefore,
when put together the words ‘HAIR SPA’ only refer to a
treatment and/or conditioning and/or nourishment of damaged
hair and various articles in newspapers, magazines and websites
f fortify this position. Hence, use of the expression ‘HAIR SPA’
bonafidely by the Appellants to indicate hair-treatment, under
the trademark ‘BERINA’, cannot amount to infringement.
D. Respondents have deliberately concealed that the expression
g
‘HAIR SPA’ is public juris and that there are several
manufacturers or marketers in the cosmetics and hair care
industry, apart from many hair salons, beauty parlours and spas
who use the expression ‘HAIR SPA’ in descriptive sense, to
h
connote/denote the nature, kind and intended purpose of the
product sold thereunder. One of the documents placed on record
By:KAMAL KUMAR
19:15:09
a by the Respondents reflects a third-party product,

sold/advertised under the trademark ‘Streax Pro Hair Spa’ along
with the Respondents’ products and thus they are not oblivious
of the common usage of this expression. In fact, perusal of
b Respondents’ documents at pages 48, 53, 76 and 83 in the List
of Documents, evidence Respondents’ own understanding that
the expression ‘HAIR SPA’ is generic and used in relation to
services offered at hair salons and beauty parlours for treatment
c
of hair. Besides the above, there are several entities which are
marketing their products using the words ‘HAIR SPA’, either as
a standalone descriptor or with suffixes as follows:-
S.No. TRADEMARK NAME OF THE COMPANY
d
1. HAIRSPA TRESEMME
REJUNEVATION
2. HAIR SPA MASK SUNSILK
3. HAIR SPA KIT NATURE’S
4. HAIR SPA STREAX
e 5. HAIR SPA BODY CARE
6. HAIR SPA ASSURE
7. HAIR SPA KIT HERBAL GLOW
8. HAIR SPA MACADAMIA
9. HAIR SPA VEOLA
10. HAIR SPA HABIB’S
11. HAIR SPA CREAM OXYGLOW
f
12. HAIR SPA HAIR TREATS
13. HAIR SPA 9 FINE
14. HAIR SPA CAREBEAU
15. HAIR SPA ALCOS
16. HAIR SPA INDOLA
17. HAIR SPA CAVINKARE PVT. LTD.
g 18. FUNCOOL HAIR SPA SAMS COSMETICS
19. CREATOR OF HAIR RENE FURTERER
SPA
20. HAIR SPA KIT NANDINI HERBAL CARE
21. HAIR SPA WELLA
22. HAIR SPA KIT BALDEV INDSUTRIES
h 23. SPA ESSENCE HANS SCHWARZKOPF &
HENKEL GmBH
24. HYDRASTASE SPA JARON COSMETIQUE PVT.
LTD.
By:KAMAL KUMAR
19:15:09
a E. Since the expression ‘HAIR SPA’ is common to trade and

public juris, no person can carve out a monopoly over the same.
It is apparent that the suit, in relation to which the present
appeal arises, was filed by the Respondents out of business
b rivalry and jealously, with the sole intent of stopping the
Appellants business by hindering a bonafide use of the
expression ‘HAIR SPA’.
F. Trial Court has erroneously observed that Appellants have
c
copied and appropriated the expression HAIR SPA, including
the styling, colour combination, etc. thereof, with a view to
usurp the goodwill of the Respondents and amounts to
infringement, since ‘HAIR SPA’ is the registered trademark of
d
the Respondents, with usage dating back to the year 2002.
There is no similarity in styling, colour combination or the trade
dress of two labels. Respondents’ trademark and trade name is
e “L’OREAL” and Appellants’ trademark is ‘BERINA’. On a
mere visual comparison, it is obvious that the Appellants’
products are sold in a different trade dress with a wholly
different colour combination of ‘grey’ and ‘peach’, while
f Respondents’ products are sold in bottles bearing a trade dress
with a colour combination of blue and white and even the
stylized manner of writing the words ‘HAIR SPA’ is not
similar. ‘HAIR SPA’ is used as a descriptor of the product and
g
in conjunction with the trademark ‘BERINA’, which obviates
any intent of the Appellants to infringe the trademark of the
Respondents viz. “L’OREAL”.
G. Trial Court has recorded the plea of the Appellants in the
h
impugned order that the registration of Respondents’ trademark
“HAIR SPA” is invalid and Appellants have already challenged
By:KAMAL KUMAR
19:15:09
a the registration, which application is pending before the

Registrar for rectification of the trademark. Court has also
recorded the response of the Respondents that where
rectification application is filed after filing of the suit by the
b Plaintiffs, Defendants are under obligation to seek prima facie
satisfaction of the Civil Court on invalidity of the registration
and since no such permission has been obtained by showing a
prima facie case, the same cannot be gone into. Having so
c
recorded the rival contentions, Trial Court has simply extracted
provisions of Section 124 of the Trade Marks Act, 1999
(hereinafter referred to as the ‘Act’) in the impugned order and
given no finding on this aspect. It is trite that a Court, while
d
deciding an interlocutory application for injunction, can
examine the validity of Plaintiff’s trademark registration, where
Defendant raises a plea that Plaintiff’s trademark, whose
e infringement is alleged, is generic, common to trade and cannot
be monopolised and give a prima facie finding thereon.
H. Trial Court has committed a gross error in holding that
Respondents are owners of the expression ‘HAIR SPA’ and the
f trademark ‘BERINA HAIR SPA’ is deceptively and
confusingly similar to the said trademark, overlooking glaring
facts that: (a) ‘HAIR SPA’ cannot be monopolised; (b) ‘HAIR
SPA’ is not used by the Appellants as a trademark; (c) ‘HAIR
g
SPA’ is used in juxtaposition with the registered trademark
‘BERINA’, which is enough to obviate any confusion between
the rival goods; and (d) ‘HAIR SPA’ is not a coined word and at
best is a combination of two English words, which are
h
descriptive of the nature of the product and adoption of a weak

By:KAMAL KUMAR
19:15:09
a trademark carries the risk of use of the trademark by the others

in the field as descriptive of character or quality of their goods.
I. Section 57 of the Act recognises that where due to inadvertence,
misrepresentation, etc. certain registrations are put on the
b Register of the Trade Marks, the same can be cancelled or
varied and the Register can be rectified by the Registrar of
Trade Marks. In the present case, rectification application filed
by the Appellants is pending and no finality can be attached to
c
validity of the Respondents’ trademark. In Lowenbrau AG &
Anr. v. Jagpin Breweries Ltd. & Anr., 2009 SCC OnLine Del
45, it was held that rights under Section 28 of the Act are
subject to the registration being valid and the registration is only
d
prima facie evidence of validity. Trial Court has not only taken
a view contrary to the aforesaid decision but has also failed to
appreciate the ratio of the decision by a Division Bench of this
e Court in Marico Limited v. Agro Tech Foods Limited, 2010
SCC OnLine Del 3806, which was placed before the Trial
Court. In the said decision the Court has inter alia held that
once a person, against whom a suit is filed on the ground of
f infringement of a trademark, which is a descriptive word, then,
if the Defendant uses his own word mark as a trademark
prominently in addition to the descriptive word mark, nothing
further is required to show the bonafides of the Defendant.
g
Dealing with the expression ‘LOW ABSORB’, used by the
Defendant, allegedly infringing Plaintiff’s registered trademarks
‘LOSORB’ and ‘LO-SORB’, the Division Bench in the said
case ruled that it was quite clearly a common descriptive
h
expression/adjective and not a coined word. At best ‘LOW
ABSORB’ is a combination of two popular English words,
By:KAMAL KUMAR
19:15:09
a which are descriptive of the nature of the product and as held by

the Division Bench in Cadila Health Care Ltd. v. Gujarat Co-
operative Milk Marketing Federation Ltd. & Ors, 2009 SCC
OnLine Del 2786, such adoption naturally entails the risk that
b others in the field would also be entitled to use such phrases.
The expression ‘LOW ABSORB’ is used in a functional sense
for the product edible oil. In essence it only describes the
characteristic of the product and is ordinarily/ normally
c
incapable of being distinctive.
J. In view of these judgements and facts of the present case,
Respondents have no prima facie case in their favour,
considering the factors viz: usage of the expression HAIR SPA
d
by the Appellants is not in the sense of a trademark but merely
as a descriptor; trade dress, lay out, colour combination, etc., are
different and Respondents’ trademark is generic and common to
e trade. Trial Court has thus erred in conforming the injunction
order. Balance of convenience also lies in favour of the
Appellants. Appellant No. 1 sent the first consignment of its
products bearing the expression ‘HAIR SPA’ to Appellant No.
f 2 for sale in India in the year 2006. No explanation worth a
mention has been given by the Respondents as to why no case
was filed between 2007 to 2013. The case is, therefore, squarely
covered by the decision of the Supreme Court in Wander Ltd.
g
and Another v. Antox India P. Ltd., 1990 Supp SCC 727.
K. Reliance was placed on the judgments in Aviat Chemicals Pvt.
Ltd. & Anr. v. Intas Pharmaceuticals Ltd., 2001 SCC OnLine
Del 750 and United Breweries Ltd. 100/1, ‘Ub Anchorage’
h
Richmond Road Bangalore v. Khodays Breweries Limited
Industries Ltd. No. 9, Seshadri Road Bangalore - 560009,
By:KAMAL KUMAR
19:15:09
a 2013 SCC OnLine Kar 2303, for the proposition that no

monopoly can be claimed on words which are generic and
common. Reliance was placed on the judgment of this Court in
Bigtree Entertainment Pvt. Ltd. v. Brain Seed Sportainment
b Pvt. Ltd. & Anr., 2017 SCC OnLine Del 12166, wherein it was
held that ‘BOOKMY’ is descriptive in nature and since
Plaintiff’s trademark ‘BOOKMYSHOW’ has not acquired
distinctiveness, coupled with examples placed on record by the
c
Defendant, where numerous other Companies were operating
with the same domain suffix, a case for grant of injunction by
the Plaintiff is not made. Reliance was placed on the judgment
in Jain Riceland Pvt. Ltd. v. Sagar Overseas, 2017 SCC
d
OnLine Del 11305, for the proposition that where the
Defendant uses a mark which is similar or deceptively similar to
the registered trademark of the Plaintiff, but as a mere
e descriptor of its products and not in the sense of the trademark,
it cannot be restrained by granting an injunction. For the same
proposition, reliance was also placed on the judgment in
Valvoline Cummins Limited v. Apar Industries Limited, 2013
f SCC OnLine Del 6414. Further reliance was placed on the
judgment in Skyline Education Institute (India) Private
Limited v. S.L. Vaswani and Another, (2010) 2 SCC 142,
where the Supreme Court agreed with finding recorded by the
g
High Court, both the learned Single Judge and the Division
Bench, that the word ‘Skyline’ was used as a trade name by
several entities and institutions and in fact as many as 117
Companies, including computer and software Companies, were
h
operating by using the ‘Skyline’ as a part of their name or

By:KAMAL KUMAR
19:15:09
a nomenclature and therefore, being a generic word no restraint

can be sought against its usage by the other parties.
7. Per contra the contentions put-forth on behalf of the
Respondents are as under:-
b A. Respondent No. 1 is a wholly owned subsidiary of Respondent
No. 2 where the latter is organised under the laws of France.
Ever since its bonafide adoption in the first decade of 1900,
Respondent No. 2 has been using the word mark “L’OREAL”
c
word per se and various formatives and labels as trademarks,
with the word “L’OREAL” forming their essential part.
Respondent No. 2 launched its products under the “L’OREAL”
marks between the years 1910-1915 and has been constantly
d
expanding its products which are now sold in about 130
countries of the world. Respondents have garnered immense
transborder reputation, which is reflected in the sales figures
e and amounts expended on promotion and advertisements of its
various products under the “L’OREAL” marks. The
“L’OREAL” and “L’OREAL” formative trademarks/labels are
duly registered in India in class 03. The trademarks are used
f both individually and/or in conjunction with other trademarks
such as GARNIER, MATRIX, MAYBELLINE, ARMANI, etc.
Respondents have a wide range of brand portfolio of various
ranges of products, including L’OREAL professional range
g
such as Hair Spa, Majirel, Platinum, etc.
B. In 2002, Respondent No. 2 honestly and bonafidely adopted the
trademark ‘HAIR SPA’ in relation to its hair products and
services in connection therewith and has been openly,
h
commercially, continuously and extensively using the same and
has built up a global reputation in the said trademark. The user
By:KAMAL KUMAR
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a of the trademark in India is through Respondent No. 1.

Trademark ‘HAIR SPA’ is an arbitrary and coined trademark in
relation to the goods for which it is used and is, therefore,
entitled to a high degree of protection. The registration dates
b back to 19.12.2006 with date of user being 31.05.2002 albeit
with a disclaimer that the word ‘HAIR’ will not be used
separately. The art features involved in the Respondents
trademark ‘HAIR SPA’ are original ‘artistic works’ under
c
Section 2(c) of the Copyright Act, 1957 and being proprietors
thereof, Respondents are entitled to protection under provisions
of the said Act. Sales figures of the products under the
trademark ‘HAIR SPA’ and the expenses incurred on
d
advertisements would show the formidable goodwill and
reputation of the trademark ‘HAIR SPA’.
C. Appellants have maliciously adopted and are using the word
e mark ‘HAIR SPA’, stylized as a trademark, on various labels, of
which ‘HAIR SPA’ is an essential feature, in relation to hair
care products and related services. Appellant No. 1
manufactures and distributes the products while Appellant No. 2
f imports and markets the impugned products, under the
impugned trademark. The rival trademarks are phonetically,
visually, structurally identical and the products being identical
i.e. the creams used for treatment of damaged hair, it is
g
inevitable that there will be a likelihood of confusion amongst
the consumers. The attempt of the Appellants to copy the trade
dress of the Respondents is a pointer to the intent of the
Appellants to misrepresent amongst the public and members of
h
trade that their products emanate from the Respondents, thereby
causing injury to the business and reputation of the
By:KAMAL KUMAR
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a Respondents. Appellants have not been able to explain how

they have adopted the impugned trademark HAIR SPA, which
has trappings of an invented/arbitrary word and is inherently
distinctive.
b D. Appellants have themselves claimed trademark rights in the
impugned trademark ‘BERINA HAIR SPA’ and therefore, it
does not lie in their mouth to allege that the trademark ‘HAIR
SPA’ is generic, non-distinctive or common to trade. The
c
dishonesty is apparent from the fact that the Appellants use the
mark ‘BERINA’ in a small font while ‘HAIR SPA’ is
prominently placed on the product. Appellants have admitted in
the preliminary objections of the written statement that ‘HAIR
d
SPA’ is ‘suggestive’ of the product in relation to which it is
used and thus even assuming that ‘HAIR SPA’ is suggestive, it
is a strong trademark, entitled to protection, without proof of
e user.
E. Appellants have filed voluminous record before the Trial Court
in an endeavour to establish that ‘HAIR SPA’ does not have a
dictionary meaning and is common to trade. Perusal of the
f documents, which are also filed in this Court, would reflect that
none of the documents show any actual or commercial user of
the trademark ‘HAIR SPA’ by any party and even assuming
there is any use, the same is subsequent to that of the
g
Respondents. It is also a settled law that the registered
proprietor is not expected to sue every infringer unless and until
the business of the third-party substantially affects the business
of the registered proprietor. It is a misconceived contention of
h
the Appellants that under no circumstances generic trademarks
can be protected. Various trademarks such as JCB, SURF,
By:KAMAL KUMAR
19:15:09
a TUPPERWARE, AQUAGUARD, FEVICOL, GOOGLE,

BOTOX, etc. though being generic, have been held entitled to
protection.
F. Respondents relied on the judgments in Lupin Ltd. v. Johnson
b and Johnson, 2014 SCC OnLine Bom 4596; Anil Verma v.
R.K. Jewellers SK Group and Others, 2019 SCC OnLine Del
8252; Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories, AIR 1965 SC 980; Bata India
c
Limited v. Chawla Boot House & Anr., 2019 SCC OnLine Del
8147; Hem Corporation Pvt. Ltd. and Others v. ITC Limited a
company existing under the companies Act, 1956, 2012 SCC
OnLine Bom 551; Pidilite Industries Limited v. Jubilant Agri
d
& Consumer Products Limited, 2014 SCC OnLine Bom 50;
T.V. Venugopal v. Ushodaya Enterprises Limited and
Another, (2011) 4 SCC 85; Pankaj Goyal v. Dabur India Ltd.,
e 2008 SCC OnLine Del 1744; Walter Bushnell Pvt. Ltd. & Ors.
v. Miracle Life Sciences and Anr., 2014 SCC OnLine Del
3243; Procter & Gamble Manufacturing (Tianjin) Co. Ltd. &
Ors. v. Anchor Health & Beauty Care Pvt. Ltd., 2014 SCC
f OnLine Del 3374; Shree Nath Heritage Liquor Pvt. Ltd. v.
M/s. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine
Del 10164; Globe Super Parts v. Blue Super Flame Industries,
1985 SCC OnLine Del 373; Ishi Khosla v. Anil Aggarwal &
g
Anr., 2007 SCC OnLine Del 126; Board of Control for Cricket
in India and Another v. Netaji Cricket Club and Others,
(2005) 4 SCC 741; Midas Hygiene Industries (P) Ltd. and
Another v. Sudhir Bhatia and Others, (2004) 3 SCC 90; and
h
Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others,

By:KAMAL KUMAR
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a 2022 SCC OnLine SC 61, for various propositions, which shall

be adverted to in the later part of the judgment.
G. The impugned order passed by the Trial Court suffers from no
infirmity in law. It is a well-reasoned order and injunction has
b been granted on sound legal principles viz: (a) Respondents are
registered proprietors of the trademark ‘HAIR SPA’; (b) Mark
is used in a distinctive style and colour combination; (c) user
dates back to the year 2002; (d) rival mark of the Appellants is
c
deceptively similar, with similar colour combination, style, font,
etc.; and (e) a person with average intelligence and imperfect
recollection is likely to be confused, more particularly, when the
trade dress is not different to an ordinary customer who relies
d
on his memory and at the most can only recall the overall get up
and prominent features. It is a settled principle of law that
Appellate Court should not interfere in the impugned order only
e because it has different view, unless the order is arbitrary,
perverse or contrary to the settled principles of law. The appeal
be dismissed being devoid of merits.
8. I have heard learned counsel for the Appellants and learned
f Senior Counsel for the Respondents.
9. Before proceeding to examine the contentions raised by the
rival parties on merits, it is important and relevant to deal with the first
contention raised by the Appellants that the Trial Court has
g
erroneously observed that no judgments had been filed on record by
the Appellants, contrary to the record of the Trial Court, which
evidences that written submissions running into 38 pages with
judgments running into 219 pages were on record before the Trial
h
Court, when the application under Order XXXIX Rules 1 and 2 CPC,
1908 was heard and disposed of. Appellants have placed before this
By:KAMAL KUMAR
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a Court as Annexure-Z1, certified copies of the judgments relied upon

by the Appellants, before the Trial Court and filed along with the
written submissions. A categorical averment is made in ground-B of
the present appeal, in the context of Annexure-Z1, that the written
b submissions were filed along with the index, wherein the written
submissions’ pages were marked as A-Z12 and citations of the
judgments were mentioned therein.
10. Perusal of the certified copies fortifies the stand of the
c
Appellants that the judgments were in fact filed along with the written
submissions. Learned counsel for the Appellants is also right in his
submission that the order dated 31.03.2015 passed by the Trial Court
records that the parties were granted 15 minutes each to address
d
further arguments and explain their written submissions, which were
on record. The matter was fixed on several dates and it was never
pointed out that the judgments were not on record. This argument of
e the Appellants assumes significance not only on account of the fact
that the impugned order suffers from an error apparent on the record
but also for the reason that this also goes to show that the Trial Court
has passed the impugned order, oblivious of the judgments before it,
f resulting in consequential and grave prejudice to the case of the
Appellants, as according to the Appellants some of the judgments
relied upon squarely cover their stand in law.
11. With the consent of the parties, Court had proceeded to hear the
g
appeal on merits. Extensive arguments were addressed by the
respective counsels and both sides have placed reliance on several
judgments.
12. Pithily put, stand of the Respondents is that they have a large
h
brand portfolio of the “L’OREAL” marks and their formatives/logos
as also registration in the trademark ‘HAIR SPA’, which is a coined
By:KAMAL KUMAR
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a and an arbitrary mark, entitled to high degree of protection. Use of the

registered mark by the Appellants as a trademark, amounts to
infringement and passing off and the Trial Court rightly confirmed the
injunction. The registered trademark of the Appellants, as per the case
b set out by them, is ‘BERINA’ and the expression ‘HAIR SPA’ is only
used as a descriptor of the nature of product in question, which they
sell under their registered trademark ‘BERINA’. Validity of
registration of Appellants’ mark HAIR SPA is questioned on the
c
ground that it is descriptive.
13. The first question that arises in the present appeal is whether the
Respondents have an exclusive right to use the trademark ‘HAIR
SPA’ and seek protection from infringement by the Appellants, who
d
are allegedly using an identical/deceptively similar trademark.
Appellants have questioned the validity of registration of
Respondents’ registered trademark ‘HAIR SPA’ on the ground that
e the mark is generic, descriptive and common to trade and thus the
question is whether at this interlocutory stage, Court can go behind the
registration and the defence raised by the Appellants under Sections
30(2)(a) and 35 of the Act. The only other and connected issue is the
f claim of the Respondents with respect to passing off.
14. Insofar as the power of this Court to go behind registration of
Respondents’ mark at this stage, while examining interlocutory
application for injunction, is concerned, this very question came up
g
before the learned Single Judge of this Court in Stokley Van Camp,
Inc. & Anr. v. Heinz India Private Ltd., 2010 SCC OnLine Del 2153.
The Court while deciding an interlocutory application, posed to itself
the question as to whether at the interlocutory stage it could go behind
h
the registration of Plaintiffs’ trademark and examine the defences
raised by the Defendant under various provisions of the Act, in light of
By:KAMAL KUMAR
19:15:09
a the stand of the Plaintiffs that Court is required to accept prima facie
validity of the registered trademark under Section 31(1) of the Act,
without more, at that stage. Learned Single Judge held that if this
proposition of law enunciated by the Plaintiffs was accepted, it would
b render the provisions of Sections 30, 35 and 124 of the Act
meaningless. I may refer to the observations of the Court, which are as
follows:-
“10.1 I have heard the learned Counsel on both sides as well as
c considered the documents placed on record. Given the background
the first issue which arises for consideration in this case is that : in
view of the fact that, the plaintiffs have obtained registration of the
mark/expression ‘Rehydrate Replenish Refuel’, could the Court
firstly, go behind the registration at an interlocutory stage and
secondly, examine the defence of the defendant in respect of the
impugned mark used by it. It is submitted by the learned Counsel for
d the plaintiffs that the Court was required to accept prima facie, the
validity of the registered mark/expression without more, at this stage
and, grant the injunction sought for given the similarity of marks, the
goods produced and also the similarity in profile of the consumers to
which both, the plaintiffs and the defendants catered.
10.2 I tend to disagree with the aforestated proposition of law
e enunciated by the learned Counsel for plaintiffs. The reason being :
if it was so, it would render the provisions of Sections 30, 35 and 124
of the T.M. Act, 1999 quite meaningless. Since I had the occasion to
deal with somewhat similar issue in the Marico's case, prolixity may
well be avoided if I were to extract my observations in the said case:
“15. CONCLUSIONS—On a consideration of submissions and
f the judgments—
(i) The Court can at an interlocutory stage take a prima facie
view as to the validity of a registered trade mark. This view
can be taken based on averments made in the written
statement/pleadings [see Lowenbrau AG (supra)]. The
pleadings in this regard, as in every other case, has to be read
g ‘meaningfully’ [see Begum Sabiha Sultan v. Nawab Mohd.
Mansar Ali Khan, (2007) 4 SCC 343].
(ii) Some marks are inherently incapable of distinctiveness
[see Asian Paints Ltd. (supra)].
(iii) The rights under Section 28 are subject to other provisions
of the Trade Marks Act. Also the registered proprietor or the
h permitted user can exercise his rights if the registered mark ‘is
valid’.
(iv) A descriptive mark can be registered provided it has
Signature Not Verified acquired secondary meaning [see Girnar (supra)],
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19:15:09

(v) If a descriptive mark is one, which is, essentially a
a combination of common English words the user of the marks
has to bear the risk of, some amount of confusion. No
monopoly can be claimed by the user of the mark [see Cadila
Health Care (supra) & J.R. Kapoor (supra)].
(vi) The mark can be impugned both at the stage of
registration and post registration. See provisions of Section
b 9(1)(a) to (c) of the Trade Marks Act for challenge at time of
registration and Sections 30 and 35 for challenge after
registration.
(vii) If the registered mark and the rival mark are not
identical; in other words the two marks are similar then the
same test as in the case of passing off is applicable; which is,
c is there a likelihood of deception or cause for confusion [see
Ruston and Hornby Ltd. (supra)].
16. In view of the discussion above in my opinion the use of the
expression by the defendant ‘LOW ABSORB’ or ‘LOW
ABSORB TECHNOLOGY’ cannot be injuncted at this stage,
since they are descriptive of the character or the quality of the
d defendant's goods unlike a trade mark which identifies the
origin. This defence is available even against registered mark
under Sections 30(2)(a) and 35 of the Trade Marks Act. In the
very least, this defence cannot be ruled out at the interlocutory
stage. The use by the defendant cannot be said to be not bona
fide since not only does it contain the additive which reduces
e oil absorption by food stuffs during the process of frying but
the PFA Rules also recognize such an eventuality…………..”
10.3 A similar view has been expressed by another Single Judge
of this Court in the case of Lowenbrau AG v. Jagpin Breweries
Limited, 157 (2009) DLT 791.
10.4 In addition to above, in my view, the provisions of Section
f 124 of the TM Act, 1999 are a clear pointer to the fact that the Court
while hearing an application for grant of interlocutory order can
come to a prima facie view of the validity of the mark. Section
124(1)(i)(a) of, the TM Act, 1999 provides that in any suit for
infringement of a trade mark the defendant pleads that the
registration of the plaintiff's trade mark is invalid the Court under
clause (i) of Sub-section (1) of Section 124 has the power to stay the
g
suit till the disposal of the proceedings entered for rectification
before the Registrar or Appellate Board are concluded. Where no
proceedings are pending under Sub-clause (ii) of Sub-section (1) of
Section 124 the Court an adjourn the suit for a period of three
months from the date of framing of issues to enable the concerned
party to apply to the Appellate Board for rectification of the Register
h provided it is satisfied that the plea regarding invalidity of the
registered mark is prima facie tenable. Sub-section (5) of Section
124 of the TM Act, 1999 exemplifies the power to the Court to make
any interlocutory order notwithstanding the fact that the suit has
Signature Not Verified been stayed. It is quite axiomatic where the Court comes to a prima
By:KAMAL KUMAR
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facie view that the registration obtained is invalid, an injunction
a cannot follow.”
15. This decision of the learned Single Judge was carried up in

appeal by the Plaintiffs therein and the Division Bench in Stokley Van
b Camp, Inc. & Anr. v. Heinz India Private Ltd., 2010 SCC OnLine
Del 3889, upheld the judgment, including the aforesaid findings and
observed that the learned Single Judge, for the purpose of deciding the
interlocutory application, was justified in looking into prima facie
c validity of the registration, as registration is a rebuttable presumption.
It was further held that even assuming that there was finality of
registration of trademark, Respondent had taken valid defences under
Sections 30(2)(a) and 35 of the Act, inasmuch as the subject mark
d
only describes the product, namely, the sports drink. Relevant
passages from the Division Bench, which are relevant to the present
case, are as follows:-
“8. In view of the ratio of the case of Marico, in the present case,
e
the submissions as urged by the counsel for the appellants are liable
to be rejected because:-
(i) The trade mark in question namely “Rehydrates, Replenishes
and Recharges” is in fact an expression which clearly falls within
Section 9(1)(b) of the said Act and it is clearly a descriptive
trademark. There should be discouragement from giving
f protection to such descriptive trademarks. We have already
observed in the judgment in Marico's case that we are using an
expression “descriptive trademark” as a general expression to
cover all cases which fall under Section 9(1) (b) and Section
30(2) (a) of the said Act.
(ii) The mark in question of the appellants was wrongly registered
g because a mark which is a deceptive mark could have only have
been registered after extensive user to make such mark
distinctive, however, the mark was registered on a proposed to be
used basis.
(iii) The learned Single Judge for the purpose of deciding the
interlocutory application was justified in looking into the prima
h facie validity of registration because the registration is only a
prima facie proof of validity and is a rebuttable presumption,
inasmuch as, it is not that there have been cancellation
By:KAMAL KUMAR
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proceedings initiated with respect to the registered trademark and
a which cancellation proceedings have been finally dismissed.
(iv)……..
(v) Even assuming that there was finality of registration of the
trademark, the respondent has taken valid defences under
Sections 30 (2) (a) and 35 of the said Act inasmuch as the subject
b mark only describes the product namely the sports drink.”
16. I may also usefully allude to the judgment of a Division Bench

of this Court in Marico Limited (supra), which in this Court’s view
squarely covers most of the issues arising in the present appeal. It
c
would be apposite to first refer to para 7 of the judgment, wherein the
issues arising for adjudication in the said case are encapsulated. For
ready reference, para 7 is extracted hereunder:-
d “7. Two basic issues arise for decision in the present appeal
along with incidental and related issues. The first issue is on the
aspect of infringement i.e. whether the appellants registration gives
it exclusive right to use the subject trade marks “LOSORB” and
“LO-SORB” and consequently whether an action for infringement is
maintainable if a person such as the respondent uses a trade mark
which is deceptively similar or nearly identical or identical to the
e registered trade marks. Included in this first issue is the aspect of
whether registration only confers prima facie validity and thereby
does not prevent the Court from denying the injunction in spite of
registration. Further, assuming that registration is final would the
appellant be entitled to the reliefs of injunction with regard to its
claims of infringement once the respondent lays out a valid defence
under the applicable provisions of the Trade Marks Act, 1999
f
(hereinafter referred to as the “Act”) which inter alia, include
Section 30(2)(a) and Section 35 thereof i.e. the use of the words by
the respondent, which words are claimed by the appellant as its
trade marks are statutorily permissible as the use is only in a
descriptive manner. The second issue is the issue with regard to
claim of the appellant pertaining to passing off and the issue is
g whether the respondent's user of the expression “LOW ABOSORB
TECHNOLOGY” in relation to its edible oil product amounts to
passing off the goods of the appellant which uses the unregistered
trade mark “LOW ABSORB”. We also would like to state that on
quite a few aspects of “passing of” and “infringement” there will be
commonality of the ratios and thus dovetailing on these common
aspects.”
h
17. Genesis of the Appeal, in the aforesaid decision, was the
impugned order passed by the learned Single Judge declining
By:KAMAL KUMAR
19:15:09
a injunction against the Respondent/Defendant from using the

expression ‘LOW ABSORB’, alleged to be deceptively similar to the
registered trademarks ‘LOSORB’ and ‘LO-SORB’ of the
Appellant/Plaintiff and thus infringing. Relying on the decision of the
b Division Bench of this Court in Cadila Health Care Ltd. (Supra),
Court held that the Appellant, in the facts of the case, can have no
exclusive ownership rights on the trademark ‘LOW ABSORB’. The
expression ‘LOW ABSORB’ is quite clearly a common descriptive
c
expression/adjective and not a coined word and at best can be a
combination of two popular English words, which are descriptive of
the nature of the product. The Court also observed that it is high time
that those persons who are first of the blocks in using a trademark
d
which is a purely descriptive expression pertaining to the subject
product ought to be discouraged from appropriating the expression
and this view is in accordance with the spirit of Sections 9, 30 and 35
e of the Act. Significantly, the Court also noted that these observations
were made mindful of the Proviso to Section 9 of the Act as per which
on account of distinctiveness, the absolute bar against registration is
removed and observed that the Court was for the present stressing on
f the intendment of the main part of the Section, which is to prevent
descriptive terms from being registered as trademarks, as also the fact
that the Act itself contains provisions for cancellation of registered
trademarks, including Section 57 thereof. Court also noted that this
g
position was confirmed by provisions of Section 31(1) which states
that registration is only prima facie evidence of validity of
registration. Relevant paras are as follow:-
h “10. In view of the judgment of the Division Bench in the Cadila

Healthcare Ltd. (supra), and with which we respectfully agree, the
appellant in the facts of the present case can have no exclusive
ownership rights on the trade mark “LOW ABSORB”. The
Signature Not Verified expression “LOW ABSORB” is quite clearly a common descriptive
By:KAMAL KUMAR
19:15:09

expression/adjective. The expression “LOW ABSORB” is not a
a coined word and at best it is a combination of two popular English
words which are descriptive of the nature of the product as held by
the Division Bench in Cadila Healthcare Ltd. (supra) case that such
adoption naturally entails the risk that others in the field would also
be entitled to use such phrases. Low Absorb is not an unusual syntax
and the same can almost be said to be a meaningful part sentence or
b phrase in itself. The expression “LOW ABSORB” surely and
immediately conveys the meaning of the expression that something
which absorbs less, and when used with respect to edible oil, it is
descriptive in that it refers to less oil being absorbed or low oil being
absorbed. Similar to the expression “Sugar Free” being not an
unusual juxtaposition of two English words the expression “LOW
ABSORB” equally is not an unusual juxtaposition of words in that
c the same can take away the descriptive nature of the expression. The
expression “LOW ABSORB” is used in the functional sense for the
character of the product viz. edible oil. With respect to the
unregistered trade mark “LOW ABSORB” we are of the firm
opinion that in essence the expression “LOW ABSORB” only
describes the characteristic of the product edible oil and
d ordinarily/normally incapable of being distinctive.
11. The aforesaid observations are made by us mindful of the
proviso of Section 9 as per which on account of distinctiveness, the
absolute bar against registration is removed, but, we are for the
present stressing on the intendment of the main part of the section
and which is to basically prevent descriptive terms from being
e registered as trade marks. The proviso no doubt does state that such
marks can be registered as a trade marks, however, the Act itself
also contains provisions for cancellation of registered trade marks
including Section 57 whereby registration obtained is cancelled
being violative of the applicable provisions of the Act. Our belief is
further confirmed by the provision of Section 31(1) which clearly
states that registration is only prima facie evidence of the validity of
f registration. It is only when cancellation proceedings achieve
finality of the same being finally dismissed can it be said that a mark
for which ordinarily there is an absolute ground for refusal of
registration that it has acquired a distinctive character i.e. a
secondary meaning or is a well known trade mark. Section 124 of the
Act is also relevant in this regard. Sub Section 5 of Section 124
g clearly provides that in spite of registration, the Court before which
an action is filed seeking protection of the trade mark is not
precluded from making any interlocutory order it thinks fit in spite of
the registration and also the fact that the suit may have to be stayed
till decision of the rectification/cancellation proceedings before the
Registrar/Appellate Board filed in terms of Section 57 of the Act.
This aspect of Section 124(5) and related aspects are dealt in details
h in the following portions of this judgment. The facts of the present
case are not such that a cancellation proceeding has been dismissed
and that which dismissal has obtained finality and it cannot be said
that the validity of registration has been finally tested.”
By:KAMAL KUMAR
19:15:09
a 18. Examining the rival marks, the Division Bench, after a detailed
analysis of various provisions of the Act and on conjoint reading of
Sections 9, 29, 30, 31, 32 and 35 held as follows in respect of
Appellant’s claim for infringement:-
b “35. Let us for the sake of argument now assume the registration
to be valid, can it then be said that the appellant is entitled to grant
of injunction for preventing the defendant from using the expression
“LOW ABSORB TECHNOLOGY” in its packing under which the
edible oil is sold and whether such use amounts to infringement of
the registered trade marks of the appellant. We note the fact that the
respondent was obviously not justified in using the expression “TM”
c after the expression “LOW ABSORB TECHNOLOGY” and the
respondent has now rightly removed the expression “TM” after the
expression “LOW ABSORB TECHNOLOGY”. An argument was
however raised that the respondent had in fact used the expression
“TM” after the expression “LOW ABSORB TECHNOLOGY” at one
point of time and that such mala fides entitles the appellant to an
d injunction in the facts and circumstances of the present case,
although, the plaintiff's registration itself may not be valid and the
defendant may have valid defences in terms of Section 30(2)(a) and
Section 35 of the Act. This aspect is also considered by us
hereinafter.
36. It has been contended on behalf of the respondent that
e respondent is selling its edible oil in a package which clearly shows
its trade mark as “Sundrop”. The respondent states that it is not
using the expression “LOW ABSORB TECHNOLOGY” as a trade
mark and the same is only being used as a descriptive expression,
and as a part of a sentence, with respect to the product in question,
namely, edible oil. The appellant, however, counters to say that the
expression “LOW ABSORB TECHNOLOGY” is being used as a
f trade mark. We have already referred to the fact that the trade mark
“Sundrop” is used by the respondent in a very prominent manner in
its packaging by the respondent and that undoubtedly is the trade
mark of the respondent. The defendant is using the expression “LOW
ABSORB” not independently but only as a part of a sentence which
reads on the packaging as “WITH LOW ABSORB TECHNOLOGY”.
g 37. Our conclusion is that we have in fact totally failed to
appreciate the argument as raised on behalf of the appellant. Surely,
when rights are claimed over a word mark as a trade mark and
which word mark is in fact a mere tweak of a descriptive word
indicative of the kind, quality, intended purpose or other
characteristics of the goods, it is not open to urge that although the
h respondent is using the descriptive word mark in fact only as a part
of sentence as a description (and even assuming for the sake of
argument only the descriptive word mark in itself) alongwith another
independent trade mark, yet the use of descriptive words are to be
Signature Not Verified injuncted against. How can it at all be argued that though the
By:KAMAL KUMAR
19:15:09

respondent is in fact shown to be using the disputed word(s) only
a with a descriptive intendment, yet, such use should be taken not in a
descriptive manner but as a trade mark. If we permit such an
argument to prevail then what will happen is that what cannot be
directly done will be indirectly done i.e., whereas the appellant is not
entitled to succeed in the infringement action because the use by the
respondent is in furtherance of its statutory rights of the user of the
b words which are descriptive of the kind, quality, intended purpose or
characteristic of the goods, yet, merely because the appellant states
that the respondent is using the same as a trade mark, the same
should be taken as infringement of the trade mark of the appellant.
Not only the plaintiff has no exclusive rights whatsoever to the trade
marks because they are such which fall within the mischief of Section
30(2)(a), the respondent/defendant is always fully justified and
c entitled to use the descriptive words in any and every manner that it
so chooses and pleases to do. If there are no rights of the plaintiff to
exclusive user of the trade mark then where does arise the question
of disentitlement of a defendant to use the trade mark of the
appellant inasmuch as any person who adopts a descriptive word
mark does so at its own peril in that any other person will also be
d fully entitled to use the same in view of a specific statutory rights
thereto, and there are various other statutory rights including that
under Section 30(2)(a), and which is what is being done by the
respondent in the facts of the present case and its rights being
further stronger because of the use along with the simultaneous use
of its trade mark “Sundrop”.
e 38. In the facts and circumstances of the present case, Section
30(2)(a) clearly applies in entitling the respondent to use the
expression “WITH LOW ABSORB TECHNOLOGY” because that is
only a descriptive use by normal English words in the English
language indicative of the kind, quality, intended purpose of
characteristic of the goods. There is no use of the expression “bona
fide” in Section 30(2)(a) as is found in Section 35, and we do not
f propose to import in Section 30(2)(a) the expression “bona fide”
because the subject matters of the two sections i.e. Section 32(a) and
Section 35 are though common on certain limited aspects, however
the two Sections do in fact operate in separate fields. Also looking at
the issue in another way, “bona fide” aspect can in a way be said to
be very much included in Section 30(2)(a) because the use of words
g which indicate their relation to the goods for the kind, quality,
intended purpose or other characteristics, etc. of the goods, is
clearly only a bona fide user of the same and which “bona fideness”
does not have to be additionally proved. In fact, there is ordinarily
not only no lack of bona fides in using the normal descriptive word,
and on the contrary there is in fact mala fides of a plaintiff in
adopting otherwise a descriptive word mark and for which adaption
h there is ordinarily an absolute ground for refusal of registration of
the trade mark. There is no mala fides of the respondent as alleged
by the appellant because the respondent is using the expression
“LOW ABSORB” as part of a sentence in a descriptive manner and
By:KAMAL KUMAR
19:15:09

the respondent is also prominently using its own trade mark
a “Sundrop”, an aspect we have repeatedly referred to otherwise in
this judgment. Merely because the respondent used “TM” earlier
after the expression “LOW ABSORB TECHNOLOGY” is not such as
to wipe out statutory rights/defences of the respondent.
39. We are also of the opinion that once the person, against
whom a suit is filed on the ground of infringement of a trade mark
b which is in fact a descriptive word, then, if a defendant is using his
own word mark as a trade mark prominently in addition to the
descriptive word mark which the plaintiff claims to be his trade
mark, nothing further is required to show the bona fides of the
defendant against whom infringement of a registered trade mark is
alleged. In the facts of the present case, we have already adverted to
c in detail the prominent use by the respondent of its independent
trade mark “Sundrop”, and, the fact that the expression “LOW
ABSORB” is being used only as part of the sentence which reads
“WITH LOW ABSORB TECHNOLOGY”.”
19. Relevant would it be to refer to the judgment of the Division

d Bench in Cadila Health Care Ltd. (supra), on which reliance was
placed in the case of Marico Limited (supra). The Appellant therein
was aggrieved by the judgment of the learned Single Judge refusing
injunction restraining the Respondents from using in any manner and
e
particularly in relation to their products frozen desserts and choc
minis, the expression ‘SUGAR FREE’, in which the Appellant
claimed and asserted trademark rights. Prime contention of the
Appellant was that the trademark ‘SUGAR FREE’ was a coined word
f
and not descriptive but merely suggestive. As an alternate argument, it
was also urged that the work ‘SUGAR FREE’ had become distinctive
of the sugar substitute and acquired a secondary meaning. Contention
g of the Respondent was that the combination of the words ‘SUGAR’
and ‘FREE’ is common and used extensively in a wide variety of
contexts to indicate a category of food. The mark being generic in
nature and common to trade was unable to identify the source of the
h product, because of its very nature and use. After a detailed
deliberation, the Division Bench held as follows:-
By:KAMAL KUMAR
19:15:09

“9. We are unable to hold that the appellant's trade mark ‘Sugar
a Free’ is a coined word; at best it is a combination of two popular
English words. The mere fact that the appellant's product cannot be
directly consumed or eaten and merely is an additive does not
detract from the descriptive nature of the trade mark. Once a
common phrase in the English language which directly describes the
product is adopted by a business enterprise, such adoption naturally
b entails the risk that others in the field would also be entitled to use
such phrases provided no attempt is made to ride on the bandwagon
of the appellant's indubitably market leading product ‘Sugar
Free’. In this connection, merely because the attributes of ‘sugar
free’ can be described by other phrases cannot detract from the
common usage of the phrase ‘Sugar Free’ as denoting products
which do not contain sugar and any trader which adopts such mark
c in the market place, does so with the clear knowledge of the
possibility of other traders also using the said mark. That is
precisely the reason for the denial of protection to such marks by
refusing registration as envisaged by Sections 9, 30 and 35 of the
Act………
Thus, it is clear that the mark or indication which serves to designate
d the quality of the goods of the appellant, which indeed the phrase
‘Sugar Free’ does, would be an absolute ground for refusal of
registration of a mark unless it has acquired a distinctive
character. The expression can at best be said distinctive qua the
artificial sweetener of the appellant and mere starting of the
marketing of the drink ‘sugar free D'lite’ cannot give the appellant
e the right to claim distinctiveness in the expression ‘Sugar Free’ in
relation to all the food products.
xxx xxx xxx
14. In consonance with the above view we are also not in a
position to agree with the appellant that the word Sugar Free’ has
become so distinctive of the sugar substitute and has acquired such a
f secondary meaning in the sugar substitute market that it cannot refer
to any other food product except the appellant's sugar substituted
product labelled Sugar Free’. There cannot be any doubt that the
word sugar free is not inherently distinctive and is clearly
descriptive in nature. In fact, the word Sugar Free in essence clearly
only describes the characteristics of the appellant's product and
g therefore, cannot afford it the protection sought in the plaint by
restraining the respondent from using the phrase sugar free’. Sugar
Free’, prima facie has not attained any distinctiveness, as alleged by
the appellant outside the field of sugar substitute artificial
sweeteners and the appellant would not be entitled to exclusively
claim the user of the expression sugar free’ in respect of any product
beyond its range of products and the respondent cannot be
h restrained from absolutely using the expression Sugar Free’,
particularly in the descriptive sense. A mere descriptive usage of the
expression Sugar Free’ by the respondent may thus blunt the edge of
claim of distinctiveness by the appellant. However, we make it clear
Signature Not Verified that if any party enters into the domain of artificial sweeteners with
By:KAMAL KUMAR
19:15:09

the trademark Sugar Free’ the appellant may have a just cause in
a seeking restraint.”
20. In this context, I may also refer to the judgment of the Full
Bench of the Bombay High Court in Lupin Ltd. (supra), wherein it is
b observed that while a registered proprietor of a trademark would
ordinarily be entitled to a finding of the Civil Court in its favour that
the trademark registered in its name is prima facie valid, the
jurisdiction of this Court is not barred for considering the plea of the
c Defendant, at the interlocutory stage, that the registration in Plaintiff’s
favour is so apparently invalid that Court should not grant injunction
in favour of the Plaintiff albeit a very heavy burden lies on the
Defendant to rebut the strong presumption in favour of the Plaintiff at
d
that stage. In the present case, it is an undisputed position that a
rectification petition has been preferred by the Appellants, which is
pending. Appellant No. 2 in its written statement has taken a plea of
invalidity of Respondents’ registration and has also stated that
e
appropriate steps to seek rectification would be taken in accordance
with law. It is also stated in the written statement that the words
‘HAIR SPA’ are generic and common to trade and Plaintiffs can claim
f no monopoly over the same.
21. Examining the facts of the present case on the anvil of the
aforesaid judgments, in my prima facie opinion, the trademark ‘HAIR
SPA’ is descriptive and the expression is commonly used in the trade
g for products which are used for treatment and nourishment of hair.
‘HAIR SPA’ is not a coined word and is merely a combination of two
popular English words HAIR and SPA juxtaposed or placed side by
side. Applying the principles explicated in Marico Limited (supra)
h
and Cadila Health Care Ltd. (supra), the expression HAIR SPA,
which only describes the characteristics of a product and is a common
By:KAMAL KUMAR
19:15:09
a descriptive expression, is incapable of being distinctive. The function

of a trademark as defined under Section 2(zb) of the Act is to
distinguish the goods or services of one person from the others, i.e. it
acts as a source identifier/indicator. From the plethora of material
b placed on record by the Appellant, it appears prima facie that HAIR
SPA is a very commonly used expression and connotes and describes
hair treatment and falls short of serving as a source identifier of the
Respondents. The word ‘HAIR’ in its plain dictionary meaning is ‘any
c
of the numerous fine, usually cylindrical, keratinous filaments
growing from the skin of humans and animals’. Similarly, the
dictionary meaning of the word ‘SPA’ is ‘mineral spring or a
luxurious resort or hotel’. Thus, the expression denotes nothing more
d
than description of the product used for hair treatment/nourishment.
22. Appellants have placed on record: (a) screenshots from the e-
commerce website Indiamart showing beauty salons, offering hair spa
e services and describing the method as well as advantages of the
treatment; (b) articles from newspapers explaining/describing the
advantages and methodology of hair spa treatment; (c) copies of
service catalogues of various saloons/beauty parlours showing use of
f the expression ‘HAIR SPA’; (d) photographs of products of various
Companies, such as TRESEMME using the expression ‘HAIR SPA’;
and (e) magazines showing use of expression ‘HAIR SPA’ by several
entities in relation to cosmetics and hair products. The examples are
g
endless and fortify the position taken by the Appellants that not only
the expression ‘HAIR SPA’ is generic and descriptive but also
common to trade and necessarily describes the nature, characteristics
and attributes of the product. Therefore, following observations of
h
Division Benches of this Court in Marico Limited (supra) and Stokley
Van Camp, Inc. & Anr. (supra), Appellants cannot be restrained from
By:KAMAL KUMAR
19:15:09
a using ‘HAIR SPA’, notwithstanding registration of the trademark

‘HAIR SPA’ in favour of the Respondents. For a ready reference and
illustratively, screenshots of some of the products are as follows:-
23. There is a categorical assertion in the appeal that Respondents’

f own documents indicate sale of a third-party product under the mark
‘Streax Pro Hair Spa’ alongside the Respondents’ products.
Additionally, a whole list of products manufactured and marketed in
India by various companies has been furnished in the appeal, where
g the word/expression ‘HAIR SPA’ is used as a suffix or standalone for
products used in hair treatment. For ready reference the same is
extracted and placed below:-
h S.No. TRADEMARK NAME OF THE COMPANY
1. HAIRSPA TRESEMME
REJUNEVATION
Signature Not Verified 2. HAIR SPA MASK SUNSILK
By:KAMAL KUMAR
19:15:09

3. HAIR SPA KIT NATURE’S
a
4. HAIR SPA STREAX
5. HAIR SPA BODY CARE
6. HAIR SPA ASSURE
7. HAIR SPA KIT HERBAL GLOW
8. HAIR SPA MACADAMIA
9. HAIR SPA VEOLA
b 10. HAIR SPA HABIB’S
11. HAIR SPA CREAM OXYGLOW
12. HAIR SPA HAIR TREATS
13. HAIR SPA 9 FINE
14. HAIR SPA CAREBEAU
15. HAIR SPA ALCOS
c 16. HAIR SPA INDOLA
17. HAIR SPA CAVINKARE PVT. LTD.
18. FUNCOOL HAIR SPA SAMS COSMETICS
19. CREATOR OF HAIR SPA RENE FURTERER
20. HAIR SPA KIT NANDINI HERBAL CARE
21. HAIR SPA WELLA
d 22. HAIR SPA KIT BALDEV INDSUTRIES
23. SPA ESSENCE HANS SCHWARZKOPF &
HENKEL GmBH
24. HYDRASTASE SPA JARON COSMETIQUE PVT. LTD.
24. Learned Senior Counsel appearing on behalf of the Respondents

e though subtly had also sought to contend that the manner in which the
mark ‘HAIR SPA’ is used by the Appellants, displaying the same
prominently in a larger font as compared to its registered trademark
‘BERINA’ establishes that the usage is in the sense of a trademark.
f
This contention also deserves to be rejected for various reasons.
Firstly, as held above, hair spa is a term of common usage to denote a
hair treatment and the Appellants are using ‘HAIR SPA’ only for this
singular purpose. The expression by itself is not acting as a source
g
identifier linking the product to the Appellant and thus it is not right to
contend that Appellants are using HAIR SPA as a trademark. One
cannot lose sight of the fact that Appellants have always used their
h trademark ‘BERINA’ in conjunction with the expression ‘HAIR
SPA’, which obviates any intention to use the same as the trademark

or to copy the registered trademark of the Respondents. The
By:KAMAL KUMAR
19:15:09
a observations of the Division Bench in Marico (supra) that persons

who are first of the blocks using a trademark which is purely
descriptive, ought to be discouraged from appropriating a descriptive
expression and monopolizing the trademarks, is very apt in the present
b case. It was observed by the Court that where rights are claimed over a
word mark as a trademark which mark is in fact a tweak of a
descriptive word indicative of kind, quality, characteristics etc. it is
not open to urge that even though the opposite party is using the
c
descriptive word along with an independent trademark, yet the use of
the descriptive word be injuncted. If this argument is allowed to stand
then what cannot be done directly will be done indirectly. If there are
no rights of a Plaintiff to exclusive user of a trademark, then where
d
does arise the question of disentitlement of the Defendant to use the
said trademark inasmuch as any person who adopts a descriptive word
mark does so at his own peril.
e 25. It was contended on behalf of the Respondents that even
descriptive words are registrable as trademarks and some examples
were also cited. As a proposition of law, this cannot be doubted, but
the argument will not aid the Respondents. It has been repeatedly held
f by Courts that the question of a mark having acquired a secondary
meaning is a matter of trial. The issue of ‘distinctiveness’ of a mark
came up before the Division Bench in Marico Limited (supra) and
conscious of the Proviso to Section 9 of the Act, the Court examined
g
the meaning ascribed to the expression ‘distinctive’. Relevant para is
as follows:-
“15. The word ‘distinctive’ is not directly defined in the Act.
However meaning of distinctive is indicated in the definitions of
h ‘trade mark’ [Section 2(zb)] and ‘well known trade mark’ [Section
2(zg)]. The word has been explained in a plethora of judgments.
Distinctive has been explained to mean such use of the trade mark
with respect to the goods of a person that the public will immediately
Signature Not Verified and unmistakably co-relate the mark with the source or a particular
By:KAMAL KUMAR
19:15:09

manufacturer/owner thereof. The real issue which however arises is
a what should be the meaning of the expression ‘distinctiveness’ in the
situation when the trade mark is a word mark of descriptive nature.
When a trade mark, which is a word mark, is arbitrarily adapted and
is such having no co-relation to the goods in question, then in such a
case distinctiveness is achieved by normal and ordinary use of the
trade mark with respect to the goods and it has been repeatedly held
b that such trade mark is entitled to the highest degree of protection.
However this is not and cannot/should not be so for a trade mark
which is a descriptive word mark. Some colour has to be taken for
the word ‘distinctive’ as found in the proviso to Section 9 from the
expression ‘well known trade mark’ which follows the distinctiveness
aspect as found in the said proviso. Courts should ordinarily lean
against holding distinctiveness of a descriptive trade mark unless the
c user of such trade mark is over such a long period of time of many
many years that even a descriptive word mark is unmistakably and
only and only relatable to one and only source i.e. the same has
acquired a secondary meaning. A case in point is the use of ‘Glucon-
D’ for 60 years in the recent judgment in the case of Heinz
Italia v. Dabur India Ltd., (2007) 6 SCC 1 A period of 60 years is
d indeed a long period of time and thus distinctiveness of the
descriptive word mark used as a trade mark was accepted, albeit in
a tweaked form of the normal descriptive word ‘Glucose’. Therefore,
when the descriptive trade mark is used only by one person
undisturbed for a very long period of time, without anyone else
attempting to use the trade mark during this long period time, a case
can be established of a descriptive word having achieved
e distinctiveness and a secondary meaning.”
26. Turning to the facts of the present case, this Court is not
persuaded to come to a prima facie conclusion that Respondents’
trademark HAIR SPA has acquired distinctiveness to claim an
f
exclusive monopoly and exclude others from using the generic
expression. Documents filed on record in terms of invoices show sales
of various products sold by the Respondents, mostly shampoos and
g hair colours under the banner of Respondents’ Company and
“L’OREAL” marks, with sprinklings of sales in hair spa product and
curiously some invoices do not have sales pertaining to the hair spa
product. From the said invoices it cannot be said at this stage that
h there is undisturbed user of HAIR SPA for a very long time, without
any other entity attempting to use it, so as to hold even prima facie
Signature Not Verifiedthat the expression brings to mind the trade origin of the product and
By:KAMAL KUMAR
19:15:09
a is distinctive so as to unmistakably relate to the Respondents. It is true

as held in Marico limited (supra) that sometimes the sales or the
values can be deceptive but even then it would be a point which is best
decided during the trial.
b 27. Applying the aforestated observations to the facts of this case,
Respondents have failed to discharge the onus of establishing prima
facie case of infringement. It would also be apposite to refer to the
observations of the Division Bench in Marico Limited (supra), while
c
dealing with the question of grant of interim injunction in a claim for
infringement, pertaining to descriptive trademarks. Relevant passages
are as follows:-
“20. That takes us to the main issue which was argued in the
d present case being the first issue of whether the appellant by virtue
of the registrations has got an exclusive right to use the expressions
“LOSORB” and “LO-SORB” and is thereby entitled to prevent
anyone else from using any trade mark which is identical or
deceptively similar to the registered trade marks.
xxx xxx xxx
e
23. A reading of the aforesaid sections taken together show that :
A trade mark is ordinarily used in relation to goods of a
manufacturer. A trade mark can be registered but ordinarily
registration is not granted if the mark falls under Subsections (1)(a)
to (1)(c) of Section 9. The proviso, however, provides for entitlement
to registration although ordinarily not permissible under Section
f 9(1)(a) to (c), provided that the mark has acquired a distinctive
character as a result of its use prior to registration or is otherwise a
well known trade mark. Registration is only prima facie evidence of
its validity and the presumption of prima facie validity of
registration is only a rebuttable presumption, see para 31 of N.R.
Dongre v. Whirlpool Corp., 1995 (34) DRJ 109 (DB). The right
conferred by registration for exclusive use of the trade mark in
g
relation to goods is if the registration is valid and which flows from
the expression “if valid” occurring in Section 28. The expression “if
valid” has been inserted for the purpose that post registration an
aggrieved person is entitled to apply for cancellation under Section
57 of the Act even if no suit is filed alleging infringement of the
registered trade mark. In case a suit is instituted, the Court, once
h there is already a pending action seeking cancellation of the trade
mark, will stay the suit till the final disposal of the
cancellation/rectification proceedings. The Court however is still
entitled to, in spite of registration, pass any interlocutory order as it
Signature Not Verified deems fit, including but not limited to, granting the injunction or
By:KAMAL KUMAR
19:15:09

dismissing the prayer for injunction. If no cancellation proceedings
a are pending as on the date of filing of a suit for infringement if the
Court is satisfied with regard to the plea of invalidity of registration
(this language of Section 124(1)(a)(i) co-relates to the expression “if
valid” as occurring in Section 28) then the Court may raise an issue
in the suit and adjourn the case for three months after framing the
issues in order to enable the defendant to apply to the Appellate
b Board for rectification of the register. Even in the circumstances
where the Court stays the suit for three months and permits a party
to apply for cancellation/rectification, the Court can pass any
interlocutory order as it thinks fit under Sub-section (5) of Section
124.
24. In view of the co-relation between Section 28 and different
c sub-sections of Section 124, it becomes clear that the entitlement to
claim invalidity of registration on the ground of the expression “if
valid” as found under Section 28 only arises if the defendant in his
written statement in a suit alleging infringement of a registered trade
mark takes up the plea with respect to registration of trade mark
being “invalid” or has already applied for cancellation of the
registered trade mark before the suit alleging infringement is filed.
d
xxx xxx xxx
26. In view of the aforesaid legal position, the first issue which
arises is whether the learned Single Judge was justified in holding
that he was entitled to look into the validity of registration of the
trade mark. Of course, we must hasten to add we are doing so and so
e has the learned Single Judge done, only for the purpose of deciding
the interlocutory application for grant or refusal of injunction and as
envisaged in Section 124(5).
27. In the facts of the present case, we find that the injunction
application was disposed of at a stage when the defendant filed an
application for vacation of the injunction and no written statement of
the defendant was on record. As already discussed hereinabove, the
f
stage of challenging the validity of registration by the defendant
arises only when the written statement is filed, because it is only in
the written statement that the plea of the registration being invalid
would be taken up in furtherance of the expression “if valid” as
found in Section 28 and also similar language as found in Section
124(1)(a). This also flows from the fact that under Section 31(1)
g registration is only a prima facie evidence of validity and not
conclusive evidence. Registration would only be a conclusive
evidence of validity if the rectification/cancellation proceedings filed
for cancellation of the registered trade mark do not finally succeed.
We are, therefore of the view that in the facts of the present case
since the issue of invalidity of registration is to be taken up only in a
written statement for an issue to be framed with respect thereto in
h
terms of Section 124(1)(a)(ii) and the written statement was yet to be
filed when the impugned order was passed, where such an issue
would/could be raised, the learned Single Judge was justified in
Signature Not Verified looking into the aspect of prima facie validity of the registration of
By:KAMAL KUMAR
19:15:09

the trade mark and it cannot be the stand of the appellant that the
a plea of invalidity of registration cannot be looked into because there
is no such plea in the written statement inasmuch as the written
statement was yet to be filed in the suit.
28. The learned Single Judge was fully entitled to look into the
aspect of validity of registration in the facts of the present case by
reference to the expression “if valid” as occurring in Section 28 and
b the related provisions of Section 31 and the different sub-sections of
Section 124. The learned Single Judge applied his mind and
considered this issue of prima facie validity of registration of trade
mark for deciding the interlocutory application and which is very
much permissible and in fact so provided under Section 124(5).
29. Now let us examine the issue of prima facie validity of
c registrations of the appellant for deciding the aspect of grant of
injunction in the facts of the present case. When we look at the facts
in the present case, we find that when the application was filed for
registration of the trade marks “LOSORB” and “LO-SORB”, the
applications clearly stated “proposed to be used”. Quite clearly
therefore on the date of registration there was no user at all of the
d trade mark, much less such use of it so as to give the trade mark a
distinctive character as a result of use made of it or the same being a
well known trade mark. Clearly therefore, the registration of the
trade mark “LOSORB” and “LO-SORB” were prima facie invalid
because the said trade marks basically are a minor variation of a
descriptive expression “LOW ABSORB” which is not an unusual
juxtaposition of words in the English language and no evidence
e existed before the Registrar of distinctiveness because the marks
were sought to be registered not on proof of actual user so as to
make the same distinctive on the date of filing of the application for
registration but only on “proposed to be used” basis. The expression
“LOW ABSORB” conveys the same meaning as “ABSORBS LOW”.
Such descriptive word marks are clearly such for which there is an
f absolute ground for refusal of registration by virtue of Section
9(1)(b) of the Act because clearly the said word marks are in fact
clear indications of designation of the kind, quality, intended
purpose or other characteristics of the goods of which the trade
mark is applied. The registrations being prima facie invalid no
action for infringement would thus lie. On the issue of acquiring
distinctiveness subsequent to the making of the application for
g registration, we have already dilated at length in the earlier part of
this judgment while dealing with the issue of passing off that it
cannot be said that the mark “LOW ABSORB” has acquired a
secondary meaning by user of a few years.”
28. The next issue that arises before the Court is qua the claim of
h
passing off. The Jural opinions on passing off show that
misrepresentation is a sine qua non to establish that a Defendant has
By:KAMAL KUMAR
19:15:09
a committed the tortious act. Relevant it is to notice the following

observations in Marico Limited (supra):
“12. An important aspect with respect to the issue of passing of is
that the respondent is selling its product with a prominent trade
mark “Sundrop” and which appears on the packaging of the
respondent in a very prominent size, much larger than the size of the
b
expression “LOW ABSORB TECHNOLOGY”. The colour scheme of
the respective packaging is also wholly different. Appellant's colour
scheme is orange and the respondent's blue. Merely because, the
consumers are same and the trade channel same, it cannot be said
that in the facts and circumstances of the case, there is a possibility
of confusion, because there are more than enough differentiating
c features on the packaging so as to avoid any issue of the respondent
passing of its goods as that of the appellant.
13. Thus the conclusion of the above is that, even though the two
respective products of the parties are identical viz. edible oil, it
cannot be said that the respondent is passing of its goods as that of
the appellant-plaintiff.”
d
29. Tested on the anvil of the observations of Division Bench, as
aforementioned and comparing the use of expression of ‘HAIR SPA’
as a descriptor with the registered trademark ‘BERINA’ along with
e the trade dress, colour combination, etc. which are completely
different, it cannot be said that Appellants have an intent to
misrepresent or that there is any likelihood of confusion as to the trade
origin. For ready reference a comparative of the competing rival
f products using the rival marks and expressions, respectively, are as
under:-
Appellants’ Product Respondents’ Product

By:KAMAL KUMAR
19:15:09
a 30. The colour scheme of the Appellants is evidently ‘grey’ and

‘peach’ while that of the Respondents is ‘blue’ and ‘white’. Even the
use of the expression ‘HAIR SPA’ in terms of their font, lettering
style, colour, etc is different. Standalone factor that consumers and the
b trade channels are common, cannot lead to a conclusion that there is a
possibility of confusion, because in this case the differential factors
overweigh trivial commonalities/similarities, if any. It is trite that
passing off is a cause which is premised on a misrepresentation by the
c
Defendant with a view to encash on the goodwill and reputation of the
Plaintiff, leading to confusion amongst the consumers. Once the
elements of confusion and misrepresentation are out of the frame, it
cannot be urged that claim for passing off is made out. The Trial Court
d
has thus erred in all aspects in granting injunction in favour of the
Respondents. In fact, as rightly contended by the Appellants, Trial
Court has not even dealt with the most crucial issues raised by the
e Appellants, despite noting the contentions on those aspects.
31. It was strenuously urged by learned counsel for the Appellants
that a plea was taken before the Trial Court that the Plaintiffs
trademark ‘HAIR SPA’ is generic and common to trade and that the
f Appellants were using the expression ‘HAIR SPA’ as a descriptor and
not in the sense of the trademark. Examples were cited to show how
mark was common to trade and a generic term. Reading of the
impugned order shows that the stand of the Appellants that these
g
issues were raised before the Trial Court is substantiated. Trial Court
has in so many words recorded these contentions, however, neither of
them have been dealt with. Trial Court has only recorded the
contentions and thereafter extracting Section 124 of the Act,
h
concluded that sitting in the arm chair of an ordinary customer,
product of the Defendants is likely to cause confusion in the minds of
By:KAMAL KUMAR
19:15:09
a the consumer of average intelligence and imperfect recollection and

that the Defendants can pass off their goods as that of the Plaintiffs to
their detriment. On this basis a finding of prima facie case, balance of
convenience and irreparable harm has been rendered in favour of the
b Respondents, restraining the Appellants from dealing with the
expression ‘HAIR SPA’, in any manner whatsoever. A holistic
reading of the impugned order also shows that the Trial Court has
decided the matter oblivious of the record before it, which contained
c
as many as 219 pages of the judgments filed by the Appellants and the
obvious consequence is that the Trial Court has not applied its mind to
the judgments and the propositions of law relied upon, which may
have tilted the case in favour of the Appellants. This becomes
d
significant as the judgment in Marico Limited (supra), entirely covers
the case of the Appellants, but there is not even a reference to the
judgement, though cited and filed by the Appellant.
e 32. Learned Senior Counsel for the Respondents has relied on
several judgments during the course of arguments but having gone
through them this Court is of the view that none of these judgments
come to the aid of the Respondents. Reliance was placed on the
f judgment in Lupin Ltd. (supra), to contend that prima facie
satisfaction of the Court to stay the trial under Section 124 of the Act
is also not enough to refuse grant of interim injunction. It is only in
exceptional circumstances such as the registration being ex-facie
g
illegal or fraudulent that the Court will refuse interim injunction in
favour of the registered proprietor of the trademark and a heavy
burden lies on the Defendant to rebut the strong presumption in law to
the validity of a registered trademark. There can be no dispute on the
h
proposition of law laid down in the said case. In my view, the
judgment only inures in favour of the Appellants as the Court has held
By:KAMAL KUMAR
19:15:09
a that it is open to the Court to go into the question of validity of the

registration of the trademarks of a Plaintiff, in view of the expression
‘if valid’ in Section 28 of the Act, relying on the observations of the
Division Bench in the case of Marico Limited (supra), wherein it was
b held that under Section 31 of the Act registration is only prima facie
evidence of the validity of the registration albeit a heavy onus lies on
the Defendant to rebut the presumption of validity. The Court also
observed that though a challenge to the validity of the registered
c
trademark can finally succeed only in rectification proceedings,
however, there is no express or implied bar taking away the
jurisdiction and power of the Civil Court to consider the challenge to
the validity at the interlocutory stage by way of a prima facie finding.
d
In Anil Verma (supra), the Court held that descriptive nature of a
mark can be determined by applying two tests: (a) Degree of
Imagination Test; and (b) Competitors’ need test, which are inversely
e proportional to each other. If the degree of imagination required is
higher, than need of the competitor decreases. If the need of the
competitors is not so high and there are alternate ways of describing
some services, then the degree of imagination required would be
f higher. In the said case, the Court found as a matter of fact that the
expressions ‘Cash for Gold’ and ‘Gold Buyers’ do not describe the
entire gamut of services offered by the Plaintiff and the expressions
could be suggestive of some part of the business of the Plaintiff and no
g
evidence was placed on record by the Defendants to suggest that the
expressions were perceived in the market as descriptive expressions.
In fact, in the same judgment the Court observed that the expression
‘WE BUY GOLD’ was a sentence which described what the Plaintiff
h
does i.e. buys gold and therefore held that it was descriptive in nature.
The judgment is wholly inapplicable to the present case as the
By:KAMAL KUMAR
19:15:09
a expression ‘HAIR SPA’ is clearly descriptive of the product, which is

used for treatment and nourishment of damaged hair and at the cost of
repetition, be it stated that it is not used by the Appellants in the
trademark sense, but merely as a descriptor of the product in question.
b 33. In Bata India Limited (supra), the Court held that POWER
could at best be termed as a suggestive mark for footwear which
would make it inherently distinctive. Even if one considers the nature
of the mark, it does not direct anyone immediately to shoes or to
c
footwear and imagination could at best lead to products related to
electricity, batteries etc. and it cannot therefore be termed as a
descriptive mark. Quite contrary, in the facts of the present case the
use of the expression ‘HAIR SPA’ would immediately direct a person
d
with average intelligence and prudent mind to a treatment pertaining
to hair and the descriptive nature of the mark can hardly be disputed.
In Hem Corporation Pvt. Ltd. and Others (supra), the Court
e expounded the principle that a registered trademark is infringed by a
person if he uses it in such a manner as to render the use of the mark
likely to be taken as a trademark i.e. it indicates a connection in the
course of trade between the person and his goods, irrespective of his
f intention. The Court, thereafter, came to a conclusion that the use of
the mark ‘MADHUR’ by the Defendant was a use in the sense of a
trademark and was not descriptive of the product Agarbatti. Reliance
on the said judgment is wholly inapt in the facts of the present case as
g
the Appellants are not using the expression ‘HAIR SPA’ in a
trademark sense. In Pidilite Industries Limited (supra), the issue
before the Court was an infringement of three registered trademarks of
the Plaintiff, two-word marks and one label mark viz. ‘FEVICOL
h
MARINE’. The contention of the Defendant was that both Plaintiff
and Defendant were using the word ‘MARINE’ in a descriptive
By:KAMAL KUMAR
19:15:09
a manner as the word was devoid of any distinctive character, being a

word having a dictionary meaning and commonly used. The Court
held that the word ‘MARINE’ forms a prominent and essential part of
the three registered trademarks of the Plaintiff and going by the
b products for which they were used i.e. adhesives, it could not be said
that the trademarks are descriptive. Moreover, it was also found that
by reason of open, continuous and extensive sales over a period of 09
years, the mark ‘MARINE’, either by itself or as a constituent of the
c
registered trademark ‘FEVICOL MARINE’, had acquired a secondary
meaning/distinctiveness and had come to be exclusively associated
with the Plaintiff. ‘HAIR SPA’ is a word of common usage, common
to the trade and descriptive of the product and thus, in my view, the
d
judgment would be inapplicable to the facts of the present case. For
the same reason, the judgments in Walter Bushnell Pvt. Ltd. & Ors.
(supra), and Pankaj Goyal (supra), would not help the Plaintiffs.
e 34. In T.V. Venugopal (supra), dealing with the mark ‘EENADU’
the Supreme Court held that the mark had acquired extraordinary
reputation and goodwill in the State of Andhra Pradesh and
‘EENADU’ newspaper and T.V. were extremely well-known and
f almost household words. Though the word ‘EENADU’ may be a
descriptive word, but had acquired a secondary meaning and fully
identified the products and services provided by the Respondent
company. In Procter & Gamble Manufacturing (Tianjin) Co. Ltd. &
g
Ors. (supra), the Court observed that the argument of ‘ALLROUND
PROTECTION’ as being descriptive of toothpaste is being raised
today only because of the use of the same for a considerably long time
as the tagline/slogan by the Respondent and the resultant association
h
thereof with the product toothpaste. Till it was so used, none, from the
expression itself could have associated it with or held the same as
By:KAMAL KUMAR
19:15:09
a descriptive of a toothpaste. It was further observed that the test of

descriptive is not of the day after long/repeated usage of some words
in relation to some goods or services, but of the day before such use
and therefore, before the day of first use of the expression
b ‘ALLROUND PROTECTION’, in relation to a toothpaste, the same
could not have been said to be descriptive thereof. Clearly, both the
judgments would not apply to an expression ‘HAIR SPA’, when used
in the context of a product used for hair treatment and this is sufficient
c
to distinguish the two judgments from the present case.
35. In Globe Super Parts (supra), the dispute before the Court
related to the mark ‘SUPERFLAME’ and the question was whether
any proprietary rights can or have been acquired in the said mark. The
d
Court held that there was no word Superflame in the standard
dictionary of English language and prima facie it would appear that
the word was not a common place word of English language nor has
e any meaning in that language. Therefore, the conclusion is inescapable
that it is a coined or fancy word and is made meaningful only when
applied to the product for which it is created. It was further observed
that Yellow flame, Red flame and Blue flame are part of general
f public knowledge and have been in existence in the physical world
and may actually be descriptive of a naturally existing flame, but the
same could not be said for Superflame and that while the word
Superflame may have a meaning by itself, but that would not
g
denigrate the amount of skill and labour spent thinking it up and
giving it an expression. Since the judgment was passed post the trial,
on the basis of the evidence, the Court held that there was ample
evidence in the form of testimony of witnesses of the Defendant, who
h
admitted that the Plaintiffs were the first persons to use the word
Superflame upon their goods and the word Superflame is a coined or a
By:KAMAL KUMAR
19:15:09
a fancy word, exclusively appropriated by the Plaintiffs, in respect of

gas cookers or appliances. Appellants in the present case have been
able to prima facie demonstrate that the expression HAIR SPA is a
word which is commonly used and is common to the trade, by placing
b on record plethora of documents indicating its use by various beauty
parlours, salons, etc. and can’t be equated with the word Superflame,
held to be a coined and fancy word by the Court.
36. Reliance on Renaissance Hotel Holdings Inc. (supra), by the
c
Appellants is also in my view wholly misplaced as the same deals
with the presumption of confusion under Section 29(3) of the Act,
where there is identity of trademark and identity of the goods/services
for which the trademark is registered. In view of the finding in the
d
earlier part of the judgment that the Appellants are not using the HAIR
SPA as trademark, this judgment is clearly distinguishable in the facts
of the present case.
e 37. For all the aforesaid reasons, the appeal is allowed setting aside
the impugned order dated 30.03.2016, passed by the learned Trial
Court, whereby the application under Order XXXIX Rules 1 and 2
CPC filed by the Respondents herein was allowed, restraining the
f Appellants from using the trademark of the Respondents i.e. ‘HAIR
SPA’.
38. The appeal is accordingly disposed of along with pending
application.
g
39. No orders as to costs.
JYOTI SINGH, J
NOVEMBER 14 , 2022/rk/shivam
h

By:KAMAL KUMAR
19:15:09
TM
h
MANU/WB/1013/2021 : Downloaded from www.manupatra.com
Printed on : 18 Aug 2023 Printed for : Vidhisastras Advocates & Solicitors
IN THE HIGH COURT AT CALCUTTA

a
Civil Appellate Jurisdiction
COMMERCIAL DIVISION
Original Side
Present:- Hon’ble Justice I. P. Mukerji

Hon’ble Justice Aniruddha Roy b
APO 69 of 2021
CS 92 of 2020
IA NO: GA 2 of 2021
SHREE GANESH BESAN MILLL AND ORS. c

Vs.
GANESH GRAINS LIMITED AND ANR.
For the Appellants : Mr. Manish Biala, d

Mrs. Jayati Choudhury,
Mr. Ashutosh Upadhyay,
Mr. Devesh Ratan,
Ms. Ranjana Seal, Advs.
For the Respondent : Mr. Ranjan Bachawat, Sr. Adv.,

e
Mr. Debnath Ghosh,
Mr. Soumya Roy Choudhury,
Mr. Shounak Mitra,
Ms. Vaibhavi Pandey, Advs.
Judgment on : 24.12.2021 f
I. P. MUKERJI, J.-
SUMMARY OF FACTS
This is a trademark appeal in this court’s Commercial Division. g
It is from a judgment and order dated 15th March, 2021 read with the
order dated 17th March, 2021, in terms of prayers (a), (b), and (c) of the
petition, made by the learned Interlocutory judge on an interim application h
filed by the respondent plaintiffs, in the suit, inter alia, complaining of
infringement of their registered word mark “Ganesh” by the
appellant/defendants.
Prayers (a), (b) and (c) are inserted below:-
“a) The respondents their men, servants, agents, assigns, dealers,
distributors and/or any one claiming on their behalf be restrained from
infringing the petitioners’ registered trademark “GANESH” by selling,

manufacturing, marketing, advertising and/or otherwise dealing in any

a
goods or services under the mark “Shree Ganesh” or under any other mark
which is identical with or deceptively similar to the petitioners’ registered
trademark “Ganesh” in any manner whatsoever;

b
b) The respondents, their men, servants, agents, assigns, dealers,
distributors and/or any one claiming on their behalf be restrained from
infringing the petitioners’ registered trademark “Ganesh” by carrying on

c
business under the name and style of SHREE GANESH BESAN MILL or
under the mark “Shree Ganesh” or any business name or trading name
which is identical with or deceptively similar to the petitioners’ registered
trademark “GANESH” as part of their trading name in any manner d
whatsoever;
c) The respondents, their men, servants, agents, assigns, dealers,
distributors and/or any one claiming on their behalf be restrained from e
passing off their goods and business as that of the petitioners by selling,
manufacturing, marketing, advertising and/or otherwise dealing in goods or
services under the mark “Shree Ganesh” or carrying on business under the f
mark “Shree Ganesh” or under any other mark which is identical with or
deceptively similar to the petitioners’ registered trademark “GANESH” in
any manner whatsoever.”

g
The respondent No. 1 manufactures and markets within India and exports
out of the country, flour products like wheat, besan and so on. It has
substantial sale in West Bengal and some market in neighbouring states. h
At the present point of time the appellant No.1 is also a manufacturer of
similar products from Raipur in Chattisgarh and have substantial sale in
Chattisgarh, Orissa, Jharkhand, Bihar and Madhya Pradesh but not in
West Bengal. This respondent has a turnover in excess of Rs.500 crores
per annum. The turnover of the appellant No.1 is much smaller.
The facts of this case from the pleadings and documents in short are like
this.
2
Ganesh Flour Mills was manufacturing and marketing flour using the
a
mark “Ganesh” since 1936. At that time, the forefathers of the second
respondent ran the business. Eventually, the business was acquired by
the father of the second respondent Brij Ratan Mimani who ran it from 88,
b
Burtolla Street, Kolkata. Thereafter, the second respondent took over the
business and as a promoter incorporated a private limited company
“Ganesh Flour Mills Private Ltd.” on 19th March, 2000. The name was
c
changed to that of the first respondent on 5th February, 2011.
From time to time the first respondent made several applications for
registration of the mark “Ganesh” or label marks or device marks with the
word “Ganesh” imprinted on it and marks which are variations of d
“Ganesh”. Most of these applications are pending. It enjoys registration of
two label marks containing the mark “Ganesh” in Class 30, one with the
restriction that the sale of the goods could only be confined to West Bengal e
and the other with the limitation that sale would be restricted to eastern
India.
By a certificate dated 28th October, 2005 the word mark “Ganesh” was f
registered by the trademark registry at the instance of the respondents
without any geographical limitation. This is the subject matter of the suit
and appeal. g
The trade dress of the respondent No. 1 is a rhombus, coloured green with
the word “Ganesh” prominently written in white and an artistic design in
the green part in light green and yellow. The words “since 1936” are
h
written below “Ganesh”.
The mark used by the appellants is “Shree Ganesh”. “Ganesh” is written
with great prominence in the same style as that used by the respondent
No.1. Above “Ganesh” there is the word “Shree” which is in much smaller
font. What is also important is that the character, size and font of the
alphabets constituting the word “Ganesh” are quite identical to those used
by the respondent No.1. There are also the added words: “besan mill” after
3
“Ganesh” in very small font. The above mark in english is at the back of
a
the package handed up to the court containing the appellants’ product
“idli rava”. The front of the package contains the same words in Hindi.
The appellants claim that the word “Ganesh” is common, generic and non-
b
distinctive. Moreover, it is the name of a most popular Hindu God. The
respondents cannot have any exclusive right to use the mark, inspite of
registration.
c
They also say that they have derived the name “Ganesh” from the father of
the appellant No. 2, Ganesh Lal Daryani. He had been doing business for
a very long time in grinding and/or manufacturing flour. This business is

d
being carried forward by the appellants in partnership. The trademark or
name “Shree Ganesh” which they are using is derived from Ganesh Lal
Daryani. They are entitled to use this mark under Section 35 of the
e
Trademarks Act, 1999.
Furthermore, the respondents were, at all material times fully aware of the
use of this mark by the appellants and admittedly from 2015. Having not
f
taken any action, the respondents are prevented from taking action by the
principles of acquiescence, waiver, estoppel and so on.
The learned judge by his impugned judgment and order made on 15th
g
March, 2021 read with the order dated 17th March, 2021 has restrained
the appellants from using the mark “Ganesh”.
TWO BASIC PRINCIPLES

h
Two principles have to be borne in mind. The first is that, in this kind of
an action alleging infringement of trademark and passing off, an order of
injunction made or refused to be made, virtually disposes of the suit.
Experience shows that the order initially passed becomes the final order
and nothing much remains of the proceeding thereafter. Therefore, the
court exercising jurisdiction has to be most judicious in passing or
refusing to pass an interim order in such an action.
4
Secondly, the general principle is that the discretion exercised by the

a
learned judge in passing an interim order in such a proceeding is
interfered with by the appeal court only if there is some gross or patent
error in appreciating the facts or law or the order is so unreasonable and

b
perverse that no reasonable judge could have passed it, is arbitrary or is a
product of bias. Otherwise, the court of appeal rarely interferes with the
discretion exercised by the learned trial judge in passing an interim order.

c
ORDER 41 RULE 27 APPLICATION
Another fact is noteworthy. It transpired during hearing of the appeal that
the appellants had not disclosed in their affidavit before the trial court
their turnover or sale of their products using the trademark “Ganesh”. d
After commencement of hearing of the appeal, the appellants took out an
application under Order 41 Rule 27 of the Code of Civil Procedure to
adduce further evidence. e
Mr. Ranjan Bachawat, learned senior advocate, appearing for the
respondents very seriously opposed any order to be made permitting the
appellants from relying on those documents on the ground that they were f
available with the appellants at the trial stage and if they did not disclose
them it was at their peril. Furthermore, most of the documents had been
fabricated to gain advantage in the appeal.

g
At the time of hearing of the appeal, without prejudice to the above
contentions, Mr. Ranjan Bachawat said that even from the documents
disclosed by the appellants, he would be able to show they had no case to

h
discharge the interim order.
As we have observed, a trademark matter is substantially decided at the
interim stage. Moreover, the question whether the learned single judge has
exercised his discretion judiciously or not is involved in the appeal.
Undoubtedly, the evidence which the appellants sought to produce were
available with them at the time of hearing of the interlocutory application
and could have been produced by them. For whatever reason they did not
produce those documents before the learned single judge. Since we were
5
hearing the matter substantially, we thought that full justice to the case
a
could be done if the parties were allowed to produce whatever materials at
their disposal.
ARGUMENTS
b
Mr. Biala, learned Counsel appearing for the appellants made very
elaborate submissions.
The respondents are registered proprietors of both label and word marks
c
“Ganesh”. The label mark or device was categorically stated to be used for
sale of the goods in West Bengal as would appear from the registration
certificates at Pages 400 to 403 of the paper book. However, the word
mark “Ganesh”, also registered did not contain any qualification with d
regard to the geographical area of sale. It was contended that this word
mark was so registered on the assurance given by the appellants to the
Trademark Registry that they would restrict their sale to West Bengal only e
so as not to infringe the trademark of others or pass off their goods as
those of others.
He submitted that the word “Ganesh” was very common and not f
distinctive. It was widely used in trade and industry. In fact, about 550
applications for registration of that mark were pending before the
Trademark registry, out of which 66 had been registered. Secondly, he g
submitted that out of inadvertence or mistake or irregular conduct of
proceedings, the respondents’ mark “Ganesh” had been registered by the
authority. Similar applications by the respondents for registration of a

h
label mark containing the word “Ganesh” or marks being variants of the
word “Ganesh” like “Ganapati”, “Shree Ganesh”, “Ganesh Gold”, “Ganesh-
G”, “Ganesha” etc. were pending registration. The respondents had
admitted in a reply to a show cause before the trademark authority on 19th
November, 2005 the above generic nature of the mark that nobody had the
right of exclusive use thereof.
6
He also argued that the appellants were carrying on the business of

a
manufacturing and marketing flour products under the name and style of
“Ganesh” for a long period prior to the application for registration by the
respondent of their mark “Ganesh”. His clients had substantial sale and
b
goodwill in the market for a long period of time.
In 1989 the predecessor-in-interest of the appellants one Shri Ganesh Lal
Daryani started using the trademark “Shree Ganesh” honestly and

c
bonafide deriving the name from his personal name. The appellants are
continuing such business.
Further, it was his contention that “Ganesh” was the name of a Hindu
d
deity, very popularly and extensively worshipped all over the country.
The registration of the mark “Ganesh” in favour of the respondent No.1
was illegal and wrongful and that by virtue of such registration no right of
e
exclusive user should be conferred on the respondents.
The appellants and the respondents are carrying on business from
different regions and the business of one does not trench on the other’s
business. f
In the application under Order 41 Rule 27 of the Code of Civil Procedure
the appellants had inter alia disclosed a certificate by a firm of Chartered
Accountants from where it appears that the gross sale of the firm in the g
financial year 1985-86 was Rs.31,950/-. It increased to
Rs.28,50,45,887.60/- in 2019-20. The gross sales were within Rs.1 crore
upto 2008-09. It crossed Rs.1 crore in 2009-10 and thereafter made a h
steady increase till 2019-20, the increase from 2017-18 to 2018-19 being
most spectacular from Rs.9,29,20,326/- to Rs.18,07,11,321/-. The
appellants in that application have also enclosed amongst other
documents invoices relating to sale to their buyers and copies of income
tax returns.
In Paragraph Nos. 3(e) and (f) of the affidavit-in-opposition used by the
appellants before the learned trial Judge, they alleged that the word
7
“Ganesh” was generic and nobody had any right of exclusive use of the
a
mark. The respondents did not have the right of preventing anybody else
from using the mark. Moreover, “Ganesh” signified the Hindu God of
wealth. The respondents could not restrain the appellants from using this
b
mark, more so, when they have used it in an honest and bonafide manner.
In the said affidavit the appellants have referred to an examination report
of 2005 of the trademark registry in relation to Application no. 1386773 of

c
the respondent for registration of the word mark “Ganesh” under Class 30.
In their examination report, the trade mark registry objected to
registration because it was a personal name and that it was “identical with
or similar to registered trademark.” To this, the respondents’ patent and d
trade mark Attorney S. Majumdar and Company by their letter dated 19th
November, 2005 replied that “Ganesh” was another name of Lord Ganesh
worshipped by the Hindus and did not have “any direct connection, e
reference with the goods under the application”. It was also urged in the
Attorney’s reply that the word “Ganesh” was “generic and the mark is
common to trade as is evident from the several cited registered marks.” f
On this, Mr. Biala made two submissions. He referred to a certificate dated
25th November, 2020 obtained from the said registry relating to the
application for registration of the image mark “Ganesh”. It stated that the g
status of the application was “opposed”. He submitted that the self same
word mark had been got registered by the respondents. This registration
had been wrongfully and illegally obtained as another office of the same
h
registry could not have granted registration of the self same mark.
Secondly, he submitted that having admitted through their trademark
Attorney that the mark was the name of God and in common and wide
spread use and of which there was several registrations, the respondents
could not prevent the appellants or are estopped from preventing the
appellants from using the mark.
8
From 1998 the predecessor-in-interest of the appellants Shree Ganesh Lal

a
Daryani adopted the trademark “Shree Ganesh” honestly and bonafide
from his name “Ganesh”. The appellants continued with this business,
thereafter reconstituting it from a proprietorship to a partnership firm.

b
According to Mr. Biala, as stated in Paragraph No. 3(h) and (i) of the said
affidavit that the respondent have sale in a restricted area. Furthermore,
the appellants and the respondents carry on business in different regions.

c
Their business activities do not overlap.
Learned Counsel stated that another word mark in the form of an image,
of the respondents, had been registered subject to the limitation under

d
Section 18(4) read with Section 2(l) of the Trademarks Act, 1999 that it
would be used within the geographical area of West Bengal. He argued
that the right to exclusive use of a mark by the registered proprietor under
e
Section 28 of the said Act was subject to the other provisions of the Act
namely, Section 30(2)(b) which inter alia, provides that if a trademark is
used in a place where the registration did not extend geographically.
f
The said right of exclusive use of a registered proprietor could not interfere
with any bonafide use by a person of his own name or that of any of his
predecessors in business, under Section 35 of the said Act.

g
Learned counsel also submitted that the respondents were guilty of
suppression. They did not disclose to the court that several hundred
applications for the mark “Ganesh” were pending registration all over the
h
country, that label marks of the respondents containing the word
“Ganesh” were pending registration, subject to opposition or had been
registered with limitation and disclaimer with regard to the geographical
area of their use.
I will discuss only the relevant cases cited by learned Counsel at the time
of dealing with the arguments.
9
Mr. Ranjan Bachawat, learned senior counsel, appearing for the

a
respondent made the following submissions.
Ganesh Dariani was the name of the father of the appellant No. 2. There is
no evidence to show that Ganesh Daryani did business using the mark b
“Ganesh” or that the father was engaged in the business of manufacture
and marketing of flour products. In other words, the appellants have not
been able to make out any connection between the father’s business and
c
the present business of the respondent and use of the trade mark
“Ganesh”. Therefore, the case sought to be made out by the appellants
that they were doing business using the personal name has no basis.
d
The appellants at best carried on and still carries on the business of
grinding flour for individual customers. They are not in any real sense
engaged in the manufacture and sale of flour products. Invoice documents

e
have been fabricated by them to show sale. He tried to show from the
invoice that the website referred to there had been obtained by the
appellants at a later date than when the invoice was issued.

f
By use of the word “Ganesh”, the appellants were infringing the
respondents’ mark under Section 29(5) of the said Act which lays down
that a registered mark is infringed by a person if he uses such registered

g
trademark as his trade name dealing with goods and services in respect of
which the trade mark is registered.
He referred to the documents at Pg. 333 of the paper book which showed
h
that application No. 854527 made by Harish Daryani who carrying on
business as “Shree Ganesh Besan Mill”, on 4th May, 1999 made an
application in Mumbai for registration of the mark “Ganesh” dealing in
goods ata, besan and spices. The date of user was claimed from 1990.
According to the records of the Trademark Registry obtained on 10th
September, 2020, the application had been abandoned.
10
The Chartered Accountant who authenticated the sales figures of the

a
appellants had made a disclaimer that the figures were those provided by
the respondents and that no documents had been available to him. Hence,
the Chartered Accountant’s certificate had little or no evidentiary value.

b
The respondents had used the mark “Ganesh” from 1936 as would be
evident from advertisements of the mark in newspapers in that period. The
respondents had also made sizeable expenses throughout the period of its
c
use, in advertisements.
The appellants have been unable to show use of the mark “Ganesh in its
business.
d
Learned Counsel brought our attention to the supplementary affidavit
affirmed on 8th February, 2021 filed by the appellants in the learned court
below. It appears from it that after the order of injunction was made on 4th e
January, 2021, the parties had a sitting to settle the trademark dispute.
The appellants by an email dated 21st January, 2021 forwarded some
proposed trademarks to the respondent. They even became ready to use

f
the words “Shree Ganesh Besan Mill” without highlighting the word
“Ganesh” prominently.
Learned Counsel also stated that the appellants were unsuccessful in

g
getting registered three marks using the word “Ganesh”, namely “Shree
Ganesh Chana Besan”, “Shree Ganesh Gulab” and “Shree Ganesh Tota
Farsan Flour”.
h
After receipt of the notice of opposition to registration of those marks, the
appellants abandoned the applications as would be evident from the
certificates dated 5th May, 2016 and 11th August, 2017 at Pgs. 325, 328
and 331 respectively of the paper book.
Mr. Bachawat further submitted that out of 540 marks containing
“Ganesh” revealed on search, sixty three were registered. Out of sixty
three, seven were registered in favour of the respondents. Fifteen were
11
word marks. Only four marks bearing the word mark “Ganesh” were
a
registered, out of which only one belonged to Class 30. Out of four marks,
one related to confectionary items, two have expired and the fourth was
owned by the respondents.

b
Learned Counsel also urged before us that the respondents enjoyed
substantial goodwill in the market and that the appellants had been
unable to furnish any evidence of user or sale of the subject product under
c
the trademark “Ganesh”. At best, the appellants were carrying on the
business of grinding flour for individual consumers (ata chakki). He also
argued that the purported sale disclosed by the appellants did not show
d
any connection between the trademark “Ganesh” and the sale of the
product.
The partnership under which the appellants were carrying on business

e
was founded after the death of the said appellant No. 2’s father and that
there was no connection between the business of the partnership and the
business carried on by the father.

f
Therefore, there was no justification for use of the father’s name Shree
Ganesh Daryani. In any case, if the father’s name had to be used “Ganesh
Daryani” and not “Ganesh” ought to have been used by the appellants.
g
The sole purpose of the appellants was to trade on the goodwill of the
respondents by using their mark “Ganesh”.
In those circumstances, there was no case for vacation or variation of the h

interim order.
I will deal with the relevant cases cited by Mr. Bachawat when I deal with
the arguments.
FACTS IN DETAIL, DISCUSSION AND FINDINGS
The respondent plaintiffs’ case is founded on the registered word mark
“Ganesh”. The application (No. 1168684) in Class 30 was made on 21st
12
January, 2003. Registration had been granted on 28th October, 2005

a
without any limitation or disclaimer.
The application of Manish Mimani at Page 400 of the paper book was
made on 17th January, 1992 (TM Application No. 565726 in Class 30) for b
registration of the image word mark “Ganesh”. It was registered under
Certificate No.231828 dated 31st August, 2000 and renewed till 17th
January, 2026 for flour, besan, ata, suji, sattu etc. with the limitation that
c
it could be used for goods for sale in the state of West Bengal only.
Another Application No. 928276 in Class 30 was made on 30th May, 2000
by Manish Mimani for the marks “Ganesh Bhog”, “Ganesh Photo (device)”.
d
It was registered as a device under Certificate No. 777955 dated 10th
March, 2009 and renewed till 30th May, 2030 for the same category of
goods with the limitation that the mark could be used for sale in the states
e
of eastern region of India only (Pg. 403 of the paper book).
On 22nd September, 2005 just a month or so before the registration of the
word mark “Ganesh” Purusottam Das Mimani made the application No.
f
1386773 for registration of the same trade mark in Class 30 for inter alia,
flour products (Pg. 404 of the paper book). A certificate dated 25th
November, 2020 issued by the trade mark registry states that the status of
the registration is “opposed”. The examination report of the trade mark g
registry stated that the mark was refused registration as it was a personal
name and identical or deceptively similar to registered trademarks. To this
the respondents’ trade mark Attorney replied on 19th November, 2005 h
that “Ganesh” was the name of a God worshipped by the Hindus and did
not have “any direct connection reference with the goods under the
application” and further that the name was generic.
About 540-550 marks of “Ganesh” or variants thereof like Ganesh Gold,
Ganesh-G, Ganesh-R, Shree Ganesh have been applied, for registration.
63-66 have been registered. 4 are for the word mark “Ganesh”. One relates
13
to confectionary. Two registrations have expired. The other belongs to the

a
respondents, the only registered word mark “Ganesh” is Class 30.
On the other hand, the appellants filed several applications for registration
of the trade mark “Shree Ganesh” and its variants. Some of these b
applications were opposed by the respondents who filed their opposition.
None of these marks have been registered in favour of the appellants.
Some of the applications of the appellants are deemed to have been

c
abandoned according to the respondents.
By virtue of registration of the word mark “Ganesh”, the respondent seeks
to restrain the appellants from using that mark in any manner

d
whatsoever.
The trademarks registry has been very cautious in dealing with such a
huge number of applications. Either they are kept pending or granted with e
disclaimer and limitation so as to recognize that the mark is generic and
not distinctive of any trader and not common to the trade (See Section 12
of the said Act).

f
In the application dated 22nd September, 2005 stated above, registration
has not been granted after consideration of the examination report that
“Ganesh” is the name of God, generic and not distinctive. The respondents
g
have admitted through a letter of their trade mark Attorney dated 19th
November, 2005 and in answer to opposition to applications for
registration of “Ganesh” or variant marks that the name was common and
h
generic and that no trader could claim exclusive right over it.
It is quite extraordinary how the word mark “Ganesh” of the respondents
was registered on 28th October, 2005 without any restriction or limitation.
More extraordinary is the conduct of the respondents in trying to exercise
their right of exclusive user of the mark “Ganesh” at least in Class 30
goods, when they were aware that it was generic, common to the trade and
14
not distinctive and had admitted so in their said correspondence with the
a
trade mark registry.
When a mark is registered the registering authority may do so without any
condition or limitation. It is equally open to the said authority to specify b
that the proprietor will not have exclusive right over a part of the mark.
Absence of a disclaimer does not always vest the proprietor with an
exclusive right over a word mark. In our case registration of the word
c
mark “Ganesh” was without any disclaimer.
Just because the word mark “Ganesh” was registered without any
limitation or condition, could this registration confer on the respondents

d
the right to prevent the appellants from using the mark “Ganesh”?
Ganesh is a Hindu deity. He is the son of Ma Durga and Lord Shiva. In the
Hindu pantheon of gods and goddesses, Ganesh is a most powerful and a e

very widely worshiped God. So much so that nearly two weeks of
celebration attending his worship takes place every year just before
autumn in Maharashtra. Ganesh festival is also highly popular in the rest

f
of the country. Its popularity is growing day by day in Bengal also. Hence,
the word or mark “Ganesh” can never be distinctive of any person or trade.
It is too common to be so. Any name of God is generally not distinctive and
g
very common and is usually not registered as a trademark.
It is doubtful whether the registration of “Ganesh” word mark is valid
under Section 28(1) of the Trademark Act, 1999. The registered proprietor
h
of the mark has the right of its exclusive use only if the registration is
valid.
It is true that till date the appellants have not taken any steps for
rectification of the register. But after promulgation of the Tribunal Reforms
Ordinance, 2021 it is always open to them to take the point of invalidity at
the trial of the suit. They have done so in the written statement filed in
this suit. In that case the court would be called upon to adjudge the
15
validity of the registration. The question is whether the appellants could be

a
restrained from using the word “Ganesh”?
By amendment of Section 57(1) of the said Act, the power to rectify the
register has been conferred on the Registrar or the High Court. b
The said Ordinance, 2021 made amendments to the Trademark Act, 1999.
The effect of this amendment was that if any proceedings for rectification
of the register in relation to the plaintiffs or the defendant’s trade mark c
were pending before the Registrar or the High Court, the suit would be
stayed till the final disposal of such proceeding. If no such proceeding had
been taken out and the High Court was under the tentative view that a
d
plea regarding validity of a trademark was tenable, it may adjourn the case
for a period of three months to enable the party to apply for rectification.
The High Court could extend the time.

e
It is always be open to the appellants to raise the plea of invalidity of the
respondents’ trademark at the trial. Even if no proceedings for rectification
of the mark are pending now the court trying the suit has the discretion to
f
adjourn the suit for three months to enable them to make such an
application [Section 124(1)(ii)]. It even has the power to further extend the
time [under Section 124(2)]. Only if no such application is made within the
g
extended time can the court declare the issue regarding validity of the
registration to have been abandoned. The decision of the Supreme Court
in Patel Field Marshal Agencies vs. P.M. Diesels Limited and

h
Ors., reported in (2018) 2 SCC 112 cited by Mr. Bachawat was before
promulgation of the ordinance. It inter alia held on the basis of the Act
then existing that if the parties did not approach the Tribunal the plea
regarding validity of the mark would not survive. With the coming of the
ordinance this consequence is done away with and the suit court retains
its discretion throughout the proceedings to order trial of the invalidity
issue. Hence the issue of invalidity is very much open to the appellants.
16
They have, in my opinion, raised a very strong prima facie case regarding
a
invalidity of the registration.
Section 35 of the said Act enacts as under:-
“35. Saving for use of name, address or description of goods or b
services.—Nothing in this Act shall entitle the proprietor or a registered user

of a registered trade mark to interfere with any bona fide use by a person of
his own name or that of his place of business, or of the name, or of the name
of the place of business, of any of his predecessors in business, or the use c
by any person of any bona fide description of the character or quality of his
goods or services.”
From the evidence disclosed by the appellants before the trial court they
d
have been able to show that the father of the appellant No. 2, Ganesh Lal
Daryani carried on some business in the grinding and making of flour. It
may not have been of the type and to the extent now carried on by the
e
appellants in partnership. The appellants say that Ganesh Lal used this
word mark in business atleast from 1989. He died on 20th July, 1998.
On 20th July, 1998 a partnership was formed by his son and grandsons.
f
In the deed of partnership it was clearly stated that the business would be
carried on under the name and style of “M/s Shree Ganesh Besan Mill”.
The business was to be of manufacture and sale of ata, besan, dal etc.
g
This partnership deed was annexed to the affidavit in opposition.
Prima facie, it appears that the derivation of “Shree Ganesh” was from
Ganesh Lal Daryani way back in 1989. As Ganesh Lal Daryani was
h
engaged in the business of flour grinding and manufacturing, he could be
called a predecessor in business of the respondents. If his name was used
to run the partnership business from 1989, the decision of the appellants
to use “Shree Ganesh” as a trademark to manufacture and market their
products when the business expanded cannot be said to be lacking in
bonafide. If that be so, even if the respondent No.1 is the registered
proprietor of the trademark “Ganesh”, they cannot prevent the appellants
17
under Section 35 of the said Act to use the words “Shree Ganesh Besan
a
Mill”.
In Precious Gems and Anr. Vs. Varun reported in (2015) 1 SCC 160,
cited by Mr. Biala, the court opined: b
“4. The plaintiff claiming trade mark of their surname “RAKYAN” filed a suit
praying, inter alia, that the defendants be restrained from doing their
business in the name and style of “NEENA AND RAVI RAKYAN”. In the said
suit, an application seeking interim relief was filed whereby it was prayed c
that the defendants be restrained from doing the business in the name and
style of “NEENA AND RAVI RAKYAN”. By virtue of the impugned order, the
defendants i.e. the present appellants have been restrained from doing their
business in the concerned name and therefore, the appellants have d
approached this Court.
9. We have perused the hoardings of the shops where they are doing the
business and upon perusal of the hoardings we do not find any similarity
between them. e
10. In our opinion, looking at the provisions of Section 35 of the Act, there is
no prima facie case in favour of the plaintiff and therefore, the defendants
could not have been restrained from doing their busines. We, therefore,
quash and set aside the impugned order granting interim relief in favour of f
the plaintiff and the appeal is allowed with no order as to costs.”
A very interesting and important concept is that of trade dress. A mark
may be a label or a device mark comprising of a word mark and artistic

g
design, colour combinations, artistically designed shapes, configurations
etc.
Let us consider two label marks with similar word marks which are non- h
distinctive and common to the trade. But a label or device mark with a
particular unregistered trade dress made artistically may differentiate one
mark as a whole from the other with a different unregistered trade dress.
In that case, the word mark of a party containing a registered word mark
would nevertheless become distinctive if viewed as a whole with the trade
dress. This kind of a trade dress was spoken about by Chandrachud, J. in
Kuber Khaini Private Limited Vs Sopariwal Exports & Anr. reported in
18
(2013) SCC Online Bom 1072 also cited by Mr. Bachawat in the following
a
manner:
“3. The First Respondent is the registered proprietor of the mark Àfzal'
which is described in the certificate of registration dated 12 November 1995 b
as a device. Registration of the mark in relation to Class-34 of the
Trademarks Act, 1999 (tobacco) is subject to the condition and limitation
that it shall not give a right to the exclusive use of the words `Pandharpuri', c
`Best Quality Indian' and to the `descriptive matter appearing on the label'.
The First Respondent has three certificates of registration which were
annexed at Exhibits B-1, B-2 and B-3 to the plaint.

d
4. The Appellant has obtained registration of the mark `KUBER' and its
certificates of registration are annexed at Exhibits A-1 to A-9 of the plaint.
Among them is a registration under Clause-34 in relation to Chewing e
Tobacco. The First Respondent has no objection to the use of the mark of
`Kuber', per se, by the Appellant. The case of the First Respondent, however,
is that the Appellant has adopted the same trade-dress as is used by it as

f
part of its labels. The First Respondent accordingly sought an injunction,
basing its claim on the infringement of its registered trademark, for passing
off and for infringement of the copyright in the artistic work.

g
6. During the course of the hearing, the packages in which the Appellant
sells its product, chewing tobacco, as well as the packages of the First
Respondent have been produced for comparison. Both the counsel have h
accepted their authenticity. In view of the settled position in law, what falls
for consideration is whether the essential features of the mark of the
Appellant are deceptively similar to those of the First Respondent.
Undoubtedly the word mark of the First Respondent is Àfzal', whereas that
of the Appellant is `Kuber'. However, what needs to be emphasised is that
the Appellant had admittedly advertised its product `Kuber' initially with a
distinctive trade-dress until it commenced using the disputed label. Exhibit-
19
H to the plaint is the impugned mark of the Appellant. A bare look at the 4 of
a
7 APP.725.2012 rival labels would indicate that the Appellant has used the
same colour scheme (brown and green in colour); the use of the hookah; and
this is coupled with the order of the descriptive words "Pandharpuri Best
b
Quality Indian Tobacco" with green shaded lines under the edge of the
words. The Appellant has absolutely no explanation, much less a bona fide
explanation, of the circumstances in which it has adopted a label which is

c
shown at Exhibit-H which is deceptively similar to the label of the
Respondent. There can be prima facie no manner of doubt that this was
done in an undisguised attempt to trade on the reputation and the goodwill
of the mark of the First Respondent. The essential character of the two d
labels would leave no manner of doubt that the entire colour scheme, get up
and trade-dress which constitute essential features of the mark of the First
Respondent, have been adopted by the Appellant. The evaluation, prima e
facie, of the merits by the learned Single Judge does not suffer from error.
8. As regards the descriptive words `Pandharpuri Best Quality Indian
Tobacco', it has been pointed out on behalf of the Appellant that the f
registration which the First Respondent has obtained at Exhibit B-1 contains
a disclaimer to the effect that the registration of the mark shall not give a
right to the exclusive use of the words and the descriptive matter appearing g
on the label. Hence, it has been urged that the First Respondent cannot
prevent the Appellant from using those words and the Appellant is entitled
to use those words too. While dealing with this contention, it must be noted
h
that a disclaimer which has been imposed in connection with the
registration of a mark under the Trademarks Act, 1999 operates in respect
of the proprietary interest which is claimed in a mark under and in
accordance with the provisions of the Act. Consequently, in an action for
infringement of a registered trademark, a Plaintiff cannot found a cause of
action on the use of descriptive words in respect of which a disclaimer has
been granted. But, equally, this does not preclude a Plaintiff from asserting
20
a cause of action for passing off. A disclaimer which is of relevance to an

a
action for infringement does not prohibit a Plaintiff from asserting
nonetheless that in an action for passing off, the use of the words by the
Defendant in a particular syntax and context would constitute the use of the
b
mark of the Plaintiff in a manner which is deceptively similar.
10. Hence, the descriptive words `Pandharpuri', `Best Quality', Ìndian' and '
Tobacco' cannot be used or depicted by the Appellant in the manner as

c
shown in Exhibit-H to the plaint or in the same form or in a deceptively
similar trade-dress so as to render the label of the Appellant similar to that
of the First Respondent. The order of the learned Single Judge thus cannot
d
be faulted because in an action for passing off, the learned Single Judge
was justified in coming to the conclusion that it was not open to the
Appellant to use even descriptive words in a form, manner or syntax that

e
would render their use in deceptive similarity to the trade-dress which has
been adopted by the Respondent.”
Even if a non-distinctive mark is part of the trader’s trade dress taken as a

f
whole which has a distinctive and original character it would be open for
the proprietor of the trade or the label mark or device or trade dress to
prevent another from using it in a passing off action.

g
The Supreme Court said these words in Registrar of Trademarks Vs.
Ashok Chandra Rakhit Ltd. reported in AIR 1955 SC 59, cited by Mr.
Bachawat.
h
“9. The last feature of the section is its proviso. That proviso preserves intact
any right which the proprietor may otherwise under any other law have in
relation to the mark or any part thereof. The disclaimer is only for the
purposes of the Act. It does not affect the rights of the proprietor except such
as arise out of registration. That is to say, the special advantages which the
Act gives to the proprietor by reason of the registration of his trade mark do
not extend to the parts or matters which he disclaims. In short, the
21
disclaimed parts or matters are not within the protection of the statute. That
a
circumstance, however, does not mean that the proprietor's rights, if any,
with respect to those parts or matters would not be protected otherwise than
under the Act. If the proprietor has acquired any right by long user of those
b
parts or matters in connection with goods manufactured or sold by him or
otherwise in relation to his trade, he may, on proof of the necessary facts,
prevent an infringement of his rights by a passing off action or a prosecution

c
under the Indian Penal Code. Disclaimer does not affect those rights in any
way.”
This principle was followed and reiterated by the division bench of the
d
Bombay High Court in Skol Breweries Ltd. Vs. Som Distilleries &
Breweries Ltd. & Anr reported in 2012 (49) PTC 231 Bom., also referred
to by learned senior counsel.

e
The trade dress of the respondents is a rhombus coloured green with the
word “Ganesh” prominently written in white and an artistic design on the
green part in light green and yellow. The words “since 1936” is written
f
below “Ganesh”. In the package of the appellants handed up to the court
the word “Ganesh” has been written in the same character, font, layout
and design as that of the respondents. It is by far the most prominent part
g
of the mark. The word “Shree” is written over it using a small font in light
green. On top of it is a floral design. The overall effect of this trade dress of
the appellants is quite similar to that of the respondents and in my view
bound to cause confusion in the trade with regard to identification of the h
goods with the manufacturer.
Even if the case for infringement of the trademark fails on the plea of
invalidity or lack of distinctiveness and the common use of the mark in the
trade, a case in passing off would lie.
On a comparison of the two labels, prima facie the respondents have been
able to make out a case in passing off.
22
Now the question is whether the principle laid down in Midas Hygiene
a
Industries (P) Ltd. and Anr. Vs. Sudhir Bhatia and Ors. reported in
(2004) 3 SCC 90 also shown to us by Mr. Bachawat can be applied here.
The principle is as follows:

b
“5. The law on the subject is well settled. In cases of infringement either of
trade mark or of copyright, normally an injunction must follow. Mere delay
in bringing action is not sufficient to defeat grant of injunction in such cases.
The grant of injunction also becomes necessary if it prima facie appears that c
the adoption of the mark was itself dishonest.”
It is in broad and general terms. It does not take into account the
situation where another user challenges the validity of the registration. d
(See Section 124 of the said Actread with Section 28(1)). The effect of the
registration on another user claiming prior, honest and concurrent use
was also not before the court (See Section 34 of the said Act). Nor was any
e
right of a person seeking to use the name of a predecessor in business.
(See Section 35). Here the first and last factors have become most relevant.
In my opinion the broad and general principle of this case has only limited
f
application to the facts of this case
IGNORING THE ORDER 41 RULE 27 APPLICATION
Let us ignore all the documents brought on record by the appellants in g
their application under Order 41 Rule 27 of the Civil Procedure Code.
Still, two points of great significance were worthy of consideration on the
evidence disclosed before the trial court and have not been adequately h
considered by the learned single judge.
The first, relates to the alleged invalidity of registration of the word mark
“Ganesh” in favour of the respondent. Section 28 of the said Act makes it
specific that rights acquired by registration would only flow if the
registration was valid. An invalidly registered mark can be resisted by any
user on that ground. An action for infringement brought by the proprietor
can be successfully defended by pleading lack of validity. In fact, Section
23
9(1)(a) of the said Act specifically states as an absolute ground for refusal
a
of registration, of trademarks which are devoid of any distinctive
character. The word “Ganesh” apart from being the name of a most
popular Hindu god is most generic, common, non-distinctive and

b
incapable of conferring any exclusive right of user on a person. If that has
been the case of the appellants, whether the respondents have used the
mark from 1936 or the appellants have used it from 1989 does not matter
c
at all. It also does not matter whether the respondent has a sale of Rs.500
crores and the appellants much smaller. To my mind, it also does not
matter whether the mark “Ganesh” is the only registered mark in Class
30. d
Further, in my opinion, due consideration was not given by the learned
judge to the adopted use by the appellants of the name of the predecessor-
e
in-interest of the appellants Ganesh Lal Daryani, as discussed above.
Another substantial point in favour of the appellants is that having
discovered the use of the word “Ganesh” by the appellants from 2015, the
f
respondent allowed them to use it till 2020 when the instant suit was filed
and in January, 2021 the order of injunction obtained. While using the
mark “Ganesh” in relation to flour products in Class 30 from 2015 to 2021
the mark has been made more generic and common and non-distinctive, g
even in the flour manufacturing trade. By the principles of acquiescence
and waiver, the respondents cannot insist on exclusive use of the mark
“Ganesh”, to the exclusion of the respondent. h
THE IMPUGNED JUDGMENT AND ORDER
The learned judge made a detailed judgment. In the first part of it, the
submissions of learned counsel for the parties have been enumerated.
The respondents’ arguments have been summarized as follows:-
The respondents have been manufacturing and selling products under the
mark “Ganesh” since 1936. Their turnover is in excess of Rs.500 crores.
24
The expenses on account of advertisement have been Rs.3 to 4 crores per

a
year. They became aware of the appellants’ use of the mark in 2015. The
appellants have been trying to ride on the respondents’ goodwill by using
the word “Ganesh”. Hence, an action in passing off would lie. The
b
appellants have not disclosed any documents to show long or prior user.
The submissions of learned counsel for the appellant defendants were
tabulated as under:-
c
The appellants are using the mark “Ganesh” deriving it from the father of
one of the partners Shri Ganesh Lal Daryani. The adoption has been
honest and bonafide.

d
The respondents’ application for registration of a similar mark was
rejected by the Registrar on the ground as it was a personal name and
similar to registered trademarks or pending applications. e

The respondents were aware of the appellants using the mark “Shree
Ganesh” since 2015 and had taken no action. Hence, there was
acquiescence and waiver of their right.

f
The appellants have been honest and concurrent user of the mark “Shree
Ganesh”.
It is also generic in nature being that of a Hindu God and common to the g
trade.
Then, the learned judge came to his findings which were as follows:-
h
The respondents have a claim on account of infringement of the registered
trademark as well as in passing off against the appellants.
They have in their favour registration of the trademark “Ganesh” dated
28th October, 2005. The respondents also are the registered proprietors of
trademarks “Ganesh Gold”, “Ganesh Premium”, “Ganesh Healthy” and
“Ganapati”.
25
According to the materials produced, the respondent plaintiffs have

a
registration for the trademark “Ganesh”. The respondents’ have produced
invoices from 1936 to establish its claim. The appellants can only produce
a trade licence of 1989 in support of their claim of use of the word

b
“Ganesh”. But, they have failed to produce any document that it was
marketing products under the name and style of “Ganesh” from 1989. By
reason of the registration of the trademark “Ganesh” in favour of the

c
respondents, they have under Section 29 of the said Act became entitled to
protection of the mark.
They are not entitled to protection under Section 35 as “Shree Ganesh”

d
has never been the name of the predecessor-in-interest of the defendant.
His name was Shri Ganesh Lal Daryani.
The description of “Shree Ganesh” shows that the word “Shree” has been
e
used in a manner so as to “camouflage itself in the design of the label the
word “Ganesh”. Visually, a customer is likely to mistake the product of the
appellants to be that of the respondents. In such a case following the case

f
of Wander Ltd. & Anr. Vs. Antox India Pvt. Ltd., the court should grant “a
prompt ex-parte injunction followed by appointment of a local commission
if necessary.”
g
The appellants are not entitled to use the word “Shree Ganesh” in carrying
on its business.
Orders in terms of prayers (a), (b) and (c) of the petition were passed.
h
INJUNCTION AND EXERCISE OF DISCRETION
The circumstances to be considered by the court to assess the prima facie
case of the applicant before it in an intellectual property matter were re-
written by Lord Diplock in the American Cynamid Vs. Ethicon case
reported in (1975) AC 396.
26
There is now departure from the principle of assessment of the prima facie
a
case of the petitioner atleast in intellectual property cases, from an
arguable case, a good case, a reasonably good case, and so on. If a
substantial question is raised to go to trial, then the court has to consider

b
granting an interim order to balance the rival rights of the parties which
remain uncertain till all the evidence is produced in the proceedings. The
balance of convenience has to be weighed by the court. If an interim order

c
of injunction is granted against the respondent and the petitioner fails at
the trial would the award of damages adequately compensate the
respondent for the loss suffered? On the other hand if the order of
injunction is refused at the interim stage and at the final trial the d
petitioner wins, would the award of damages adequately compensate him?
This exercise involves the use of discretion.
e
Now, this exercise of discretion by the trial judge is usually not interfered
with by the appellate court only for the reason that it would have come to
a different conclusion. This principle was explained by the Supreme Court

f
in Wander Ltd. & Anr. Vs. Antox India Pvt. Ltd. reported in 1990
(supp) SCC 727 in the following words:
9. Usually, the prayer for grant of an interlocutory injunction is at a stage

g
when the existence of the legal right asserted by the plaintiff and its alleged
violation are both contested and uncertain and remain uncertain till they are
established at the trial on evidence. The court, at this stage, acts on certain
h
well settled principles of administration of this form of interlocutory remedy
which is both temporary and discretionary. The object of the interlocutory
injunction, it is stated is to protect the plaintiff against injury by violation of
his rights for which he could not adequately be compensated in damages
recoverable in the action if the uncertainty were resolved in his favour at the
trial. The need for such protection must be weighed against the
corresponding need of the defendant to be protected against injury resulting
from his having been prevented from exercising his own legal rights for
27
which he could not be adequately compensated. The court must weigh one
a
need against another and determine where the "balance of convenience
lies". The interlocutory remedy is intended to preserve in status quo, the
rights of parties which may appear on a prima facie. The court also, in
b
restraining a defendant from exercising what he considers his legal right but
what the plaintiff would like to be prevented, puts into the scales, as a
relevant consideration whether the defendant has yet to commence his

c
enterprise or whether he has already been doing so in which latter case
considerations somewhat different from those that apply to a case where
the defendant is yet to commence his enterprise, are attracted.

d
14. The appeals before the Division Bench were against the exercise of
discretion by the Single Judge. In such appeals, the Appellate Court will not
interfere with the exercise of discretion of the court of first instance and
e
substitute its own discretion except where the discretion has been shown to
have been exercised arbitrarily, or capriciously or perversely or where the
court had ignored the settled principles of law regulating grant or refusal of
f
interlocutory injunctions. An appeal against exercise of discretion is said to
be an appeal on principle. Appellate Court will not reassess the material
and seek to reach a conclusion different from the one reached by the court
below if the one reached by the court was reasonably possible on the g
material. The appellate court would normally not be justified in interfering
with the exercise of discretion under appeal solely on the ground that if it
had considered the matter at the trial stage it would have come to a h
contrary conclusion. If the discretion has been exercised by the Trial Court
reasonably and in a judicial manner the fact that the appellate court would
have taken a different view may not justify interference with the trial court's
exercise of discretion. After referring to these principles Gajendragadkar, J.
in Printers (Mysore) Private Ltd. v. Pothan Joseph : (SCR 721)
….These principles are well established, but as has been observed by
Viscount Simon in Charles Osention & Co. v. Johnston the law as to the
28
reversal by a court of appeal of an order made by a judge below in the

a
exercise of his discretion is well established, and any difficulty that arises is
due only to the application of well settled principles in an individual case.
The appellate judgment does not seem to defer to this principle.” b
In Dalpat Kumar and Anr. vs. Prahlad Singh and Anr. reported in
(1992) 1 SCC 719 the Supreme Court said:

c
“4. …….. It is settled law that the grant of injunction is a discretionary relief.
The exercise thereof is subject to the court satisfying that (1) there is a
serious disputed question to be tried in the suit and that an act, on the facts
d
before the court, there is probability of his being entitled to the relief asked
for by the plaintiff/defendant; (2) the court's interference is necessary to
protect the party from the species of injury. In other words, irreparable
injury or damage would ensue before the legal right would be established at
e
trial; and (3) that the comparative hardship or mischief or inconvenience
which is likely to occur from withholding the injunction will be greater than
that would be likely to arise from granting it.

f
5. Therefore, the burden is on the plaintiff by evidence aliunde by affidavit
or otherwise that there is "a prima facie case" in his favour which needs
adjudication at the trial. The existence of the prima facie right and infraction
of the enjoyment of his property or the right is a condition for the grant of g
temporary injunction. Prima facie case is not to be confused with prima facie
title which has to be established, on evidence at the trial. Only prima facie
case is a substantial question raised, bona fide, which needs investigation

h
and a decision on merits. Satisfaction that there is a prima facie case by
itself is not sufficient to grant injunction. The Court further has to satisfy
that non-interference by the Court would result in "irreparable injury" to the
party seeking relief and that there is no other remedy available to the party
except one to grant injunction and he needs protection from the
consequences of apprehended injury or dispossession. Irreparable injury,
however, does not mean that there must be no physical possibility of
repairing the injury, but means only that the injury must be a material one,
namely one that cannot be adequately compensated by way of damages.
29
The third condition also is that "the balance of convenience" must be in

a
favour of granting injunction. The Court while granting or refusing to grant
injunction should exercise sound judicial discretion to find the amount of
substantial mischief or injury which is likely to be caused to the parties, if
the injunction is refused and compare it with that it is likely to be caused to b
the other side if the injunction is granted. If on weighing competing
possibilities or probabilities of likelihood of injury and if the Court considers
that pending the suit, the subject-matter should be maintained in status

c
quo, an injunction would be issued. Thus the Court has to exercise its sound
judicial discretion in granting or refusing the relief of ad interim injunction
pending the suit.
d
6. ………The phrases "prima facie case", "balance of convenience" and
"irreparable loss" are not rhetoric phrases for incantation, but words of
width and elasticity, to meet myriad situations presented by man's
ingenuity in given facts and circumstances, but always is hedged with

e
sound exercise of judicial discretion to meet the ends of justice.”
The appeal court can only exercise its discretion if the order of the trial
judge is perverse, most unreasonable or has not considered material facts

f
We have already discussed the various vital issues involved in this case for
consideration of grant or refusal to grant an interim injunction which were
not adequately considered by the learned judge in exercising his discretion g
in the matter.
Before concluding this judgment, I would like to deal with the point of
h
suppression raised by Mr. Biala. An interim order is vitiated if it is
obtained by suppression of material facts. The plaintiff or the petitioner is
not obliged to disclose all facts before the court but is only obliged to
disclose those which are material on proof of which he is entitled to an
order. The respondents had founded their case on the certificate dated
28th October, 2005 issued by the trademark registry in respect of their
word mark “Ganesh” without any condition, restriction or limitation. On
that basis, they ran the case of infringement seeking a restraint order on
30
the appellants to use that mark in any form. Whether registration of word
a
and label marks containing the word “Ganesh” or any variant thereof was
pending or marks with “Ganesh” had been registered subject to a
geographical limitation or disclaimer was not material for the respondents’

b
case. Hence, I see no merit in this contention.
In those circumstances and for the reasons advanced, the interim order
granted by the learned judge requires modification if not wholly, c
substantially.
CONCLUSIONS:
d
As the word mark Ganesh is very common to the flour trade generic, non-
distinctive and moreover as it is the name of a most popularly worshipped
Hindu god, the registration of this mark in favour of the respondent No. 1
e
prima facie appears to be invalid. The respondents do not have any
exclusive right of ownership of this mark. They cannot restrain the
appellants from using the word mark “Ganesh”, in an infringement action.
f
However in my opinion the respondents have a proprietary right over the
label mark or trade dress under which their goods are sold, containing the
word mark “Ganesh” along with artistically coloured designs. Specially
important in this trade dress is the character, size, font and style of g
writing “Ganesh” prominently, accompanied by the above colour
combination and design. In my opinion the appellants have imitated the
character, size, font and style of writing “Ganesh”. The prominence of h
“Ganesh” in their label mark also containing the word mark “Ganesh” and
colourful designs is such, that the label resembles the trade dress of the
respondents, causing deception and confusion in the trade. The appellants
seem to be trading on the goodwill of the respondents. In those
circumstances, an action in passing off action lies. The respondents have
been able to make out a prima facie case in passing off.
31
The appellants are entitled to use the mark “Shree Ganesh” under Section
a
35 of the Trademarks Act, 1999.
Considering all the circumstances the impugned interim order granting a
blanket injunction restraining use by the appellants of the respondents’ b
trademark is modified to the extent that they will be entitled to use the
label mark with the following modifications:
The word “Ganesh” in isolation cannot be used. The words: “Shree Ganesh c
Besan Mill” has to be written on the label in the same character font and
style and in a non-prominent way, differently from the style in which it is
written on the label of the respondents’ products. The place of

d
manufacture Raipur, Chhattisgarh should also be mentioned so as not to
cause any confusion or deception in the trade.
The appeal is disposed of. The application (CAN 2 of 2021) is allowed. e
Certified photocopy of this order, if applied for, be supplied to the parties
upon compliance with all requisite formalities.
I agree, f
(ANIRUDDHA ROY, J.) (I. P. MUKERJI, J.)

g
32
TM
Publisher has only added the Page para for convenience in referencing.
h

Reserved on: 25.08.2022
Date of decision: 21.09.2022
b + CS(COMM) 363/2022
VASUNDHRA JEWELLERS PVT. LTD. ..... Plaintiff
Through: Mr.Sagar Chandra, Mr.Prateek
Kumar, Ms.Shubhie Wahi,
Ms.Sanya Kapoor, Mr.Parrek &
Ms.Aarushi Jain, Advs.
c
Versus
KIRAT VINODBHAI JADVANI & ANR. ..... Defendants
Through: Mr.Raghavendra M. Bajaj,
Mr.Anshuman Upadhyay,
d Mr.Naseem & Mr.Prashant, Advs.
for D-1.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
I.A. 8515/2022
e
1. By this application, filed under Order XXXIX Rules 1 and 2 read
with Section 151 of the Code of Civil Procedure, 1908 (in short, ‘CPC’),
the plaintiff prays for an ad-interim injunction restraining the defendant
no. 1, its directors, executives, partners or proprietors, officers, servants
f
and agents or any other persons acting for or on their behalf from
manufacturing, selling, offering for sale, exporting, advertising,
marketing and/or in any manner using, directly or indirectly, in relation to
g any jewellery/precious stones/gems and/or any other allied and cognate
goods/services, including but not limited to textiles, textile goods and
fabrics, under the impugned marks/labels/logos/ domain name
h ‘VASUNDHRA’/ and/or ‘VASUNDHRA

Digitally Signed By:SHALOO
BATRA
Signing Date:21.09.2022CS(COMM) 363/2022 Page 1 of 18
18:31:39
b FASHION’/ /https://vasundhra.business.site and/or any

other mark identical and/or deceptively similar to the plaintiff’s trade
marks/labels/logos/domain name ‘VASUNDHRA’/ ‘VASUNDHRA
JEWELLERS’/ , the ‘VASUNDHRA’ family of

marks (hereinafter referred to as the ‘VASUNDHRA Marks’) /
https://vasundhrajewellers.com/ or doing any other thing amounting to
d
infringement of the plaintiff’s registered ‘VASUNDHRA Marks’ as also
amounting to passing off, dilution and unfair competition.
2. It is the case of the plaintiff that the plaintiff-company was
e established on 28.10.1999 and has been continuously and uninterruptedly

using the name ‘VASUNDHRA’/’VASUNDHRA JEWELLERS’ both
as a trade mark as also a trade name. The plaintiff has its jewellery
showroom at Pitampura, New Delhi, where the customers from not only
f Delhi but also all over India come to shop. The plaintiff asserts that over
the years, it has used several iterations of the ‘VASUNDHRA Marks’,
g including but not limited to
h
. The plaintiff is also the
BATRA
18:31:39
registered proprietor of the various trade marks in Classes 14 and 35, the
list whereof is given by the plaintiff in its plaint as under:-
Trade Mark Date of Class and Status Disclaimer/Condition

b
and Application Specification
Application No. And User of Goods and /Association
Detail Services
Date of [Class: 14] Registered NIL
Application: Jewellery In and Valid
c Precious Up to:
Metal and
Gems. 23/05/2023
23/05/2003
User Detail:
d
01/01/1999
Date of [CLASS:14] Registered NIL

Application: and Valid
Precious Up to:
e
metals or
coated 22/05/2029
22/05/2019 therewith
jewellery
including
User Detail: imitation
f jewellery and
28/10/1999 precious
stones. All
being goods
included in
class 14.
g

BATRA
18:31:39
Date of [CLASS: 14] Registered NIL

Application: and Valid
Precious Up to:
metals or
coated 19/12/2027
b 19/12/2017 therewith
jewellery
including
User Detail: imitation
jewellery and
17/08/2016 precious
c stones. All
being goods
included in
class 14.
d 3. The plaintiff asserts that by virtue of the abovementioned

registrations, the plaintiff has an exclusive right to use the
‘VASUNDHRA Marks’.
4. The plaintiff further asserts that it has obtained registration for its
e
domain name www.vasundhrajewellers.com on 26.06.2011, and has
subsequently obtained registrations in the following domain names:
a. www.vasundhra.com
b. www.vasundhara.com
f c. www.vasundhra.in
d. www.Vasundhrajewellers.in
e. www.Vasundhrajewellers.com
f. www.vasundhrajeweller.in
g 5. The plaintiff also states that it has invested an enormous amount of

money and effort in building the brand identity through the promotion of
the ‘VASUNDHRA Marks’ through various media, included but not
limited to TV, radio and hoardings.
h

BATRA
18:31:39
6. The plaintiff has also engaged the services of popular Indian

celebrities, including but not limited to Ms. Prachi Desai and Ms. Shweta
Tewari. The goods of the plaintiff are regularly showcased at various
b
fashion events and most recently in March 2022 in the ‘FDCI X Lakme
Fashion Week’ (hereinafter referred to as ‘Fashion Week’), where the
actress Ms. Jahnvi Kapoor was the showstopper for the fashion designer
c Punit Balana, in which she wore the jewellery of the plaintiff.

7. The plaintiff asserts that it also sets up kiosks in various events
and/or exhibitions to reach out to members of the trade and general
public. It has also collaborated with eminent fashion designers, the details
d of whom are given in paragraph 15 of the plaint.
8. The plaintiff asserts that since its launch, the plaintiff has achieved
unprecedented success with its sale figures having increased from Rs.
19,80,812/- (Rupees Nineteen Lakh Eighty Thousand Eight Hundred
e
Twelve only) in the year 1999-2000 to Rs. 79,71,49,118/- (Rupees
Seventy-One Crore Seventy-One Lakh Forty-Nine Thousand One
Hundred Eighteen only) for the period 2021 till 04.03.2022. The plaintiff
has also expended huge amounts for the promotional expenses on their
f
‘VASUNDHRA Marks’, which have increased from Rs. 43,254/-
(Rupees Forty-Three Thousand Two Hundred Fifty-Four only) in the
financial year 1999-2000 to Rs. 8,65,055/- (Rupees Eight Lakh Sixty-
g Five Thousand Fifty-Five only) for the period 2021 till 04.03.2022.
9. The plaintiff asserts that it has also been proactively defending its
proprietary and statutory rights in the mark by initiating various
oppositions and litigation against third parties, the details whereof have
h been given in paragraph 20 of the plaint.

BATRA
18:31:39
10. The plaintiff asserts that it is only around April, 2022 that it came
across the publication of the defendant no. 1’s impugned mark/logo
'VASUNDHRA FASHION’/ in Class 25, bearing the

application No. 5277967 dated 08.01.2022, for goods being ‘textile,
textile goods and fabrics’. Though the defendant no. 1 claims user since
c
02.12.2020, the plaintiff asserts that no document in support thereof has
been given by the defendant no. 1.
11. The plaintiff asserts that the mark adopted by the defendant no. 1 is
d deceptively similar to the ‘VASUNDHRA Marks’ of the plaintiff.
12. The plaintiff further asserts that the defendant no. 1 is also
operating a website bearing the domain name
https://vasundhra.buiness.site, which is identical to that of the plaintiff.
e The defendant no. 1’s goods are also available for sale online on various
e-commerce websites like Flipkart, India Mart and Shopsy.
13. The plaintiff asserts that while the mark for which the defendant
no. 1 has applied for registration is as under:-
f
the defendant no. 1 is using the following mark on its stores:-

BATRA
18:31:39
14. The plaintiff asserts that the above conduct shows the dishonest
d intention of the defendant no.1.

15. The plaintiff further asserts that the defendant no. 1 has
subsequently also opposed three applications for trade mark registration
made by the plaintiff, the details whereof are given in paragraph 28 of the
e plaint.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF

16. The learned counsel for the plaintiff submits that the plaintiff is the
f
prior and registered proprietor of the ‘VASUNDHRA Marks’, registered
for goods in Class 14; and the defendant no. 1 deals in allied goods, with
the mark of the defendant no. 1 being deceptively similar to that of the
plaintiff. Placing reliance on the judgment of the Supreme Court in
g
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories, (1965) 1 SCR 737, he submits that ‘VASUNDHRA’ is an
essential feature of the trade mark of the plaintiff. The same has been
h adopted by the defendant no. 1 and, therefore, in terms of Section

BATRA
18:31:39
29(2)(b) of the Trade Marks Act, 1999 (in short, ‘the Act’), the use of the
mark by the defendant no. 1 for allied and cognate goods would amount
to infringement of the rights of the plaintiff in its trade mark. He submits
b
that the defendant no.1 is also guilty of passing off as well as dilution and
unfair competition.
17. He submits that the plea of the defendant no. 1, that the word
c ‘VASUNDHRA’ is a common name in India, cannot be accepted to

denude the right of the plaintiff in the said mark. Referring to Sections
2(1)(m) and 2(1)(zb) of the Act, the learned counsel for the plaintiff
submits that the trade mark may also include a ‘name’ so long as it is
d capable of distinguishing the goods or services of one person from those
of others. In the present case, as the name itself has no connection with
the goods in question, it is capable of distinguishing the goods of the
plaintiff from the defendant no. 1 and, therefore, is entitled to protection
e
as a trade mark. In any case, as the defendant no. 1 itself has applied for
registration of its mark in ‘VASUNDHRA’ in Class 25, the defendant
no.1 is estopped from contending that the said mark is not entitled to
protection. In this regard, he places reliance on the judgment of this Court
f
Automatic Electric Limited v. R.K. Dhawan & Anr., 1999 SCC OnLine
Del 27.
18. The learned counsel for the plaintiff further submits that the plea of
g the defendant no. 1, that there are other marks registered with the
Registrar of Trade Marks bearing the name ‘VASUNDHRA’, is also
irrelevant inasmuch as mere presence of a mark in the Register of Trade
Marks is not evidence of its use. In this regard, he places reliance on the
h judgment of this Court in Century Traders v. Roshan Lal Duggar &

BATRA
18:31:39
Co., 1977 SCC OnLine Del 50. In any case, the use of a mark by others
cannot act as a shield for the defendant no. 1 to infringe the trade mark of
the plaintiff. In support of this assertion, he places reliance on the
b
judgment of this Court in P.M. Diesels Ltd. v. S.M. Diesels, 1994 SCC
OnLine Del 117.
19. On the plea of the defendant no. 1 that the goods of the defendant
c no. 1 and the plaintiff are different and not similar goods, being textiles
as opposed to jewellery, the learned counsel for the plaintiff places
reliance on the judgment of the High Court of Bombay in SIA Gems and
Jewellery Pvt. Ltd. v. SIA Fashion, Mumbai, 2003 SCC OnLine Bom
d 498, to submit that jewellery and fashion garments have been declared to
be cognate goods.
20. Placing reliance on the judgment of the Supreme Court in
Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3 SCC 65,
e
he submits that in any case, the Court will also have regard to the future
expansion prospects of the plaintiff’s business and the connection of the
present business with fashion industry, as is evident from the plaintiff’s
products being displayed in the Fashion Week and its association with
f
other fashion designers as mentioned hereinabove.
21. He submits that the stand taken by the plaintiff before the learned
Examiner of Trade Marks cannot act as an estoppel against the plaintiff
g or be used to deny relief to the plaintiff, if the plaintiff is otherwise
entitled to the same. In support, he refers to the judgment of this Court in
Telecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd., 2019
SCC OnLine Del 8739.
h

BATRA
18:31:39
22. The learned counsel for the plaintiff also submits that the plaintiff
may have no objection if the defendant no. 1 confines its area of
operation to the State of Gujarat and on a business-to-business model (in
b
short, ‘B2B Model’).
SUBMISSIONS ON BEHALF OF THE DEFENDANT NO. 1

23. On the other hand, the learned counsel for the defendant no. 1
c
submits that there is absolutely no chance of any confusion being caused
by the use of the mark ‘VASUNDHRA’ by the defendant no. 1. He
submits that the class of goods of the defendant no.1 is different from that
of the plaintiff; they are addressed to different strata of society, with the
d
garments of the defendant no. 1 being priced in the range of around Rs.
1000/- (Rupees One Thousand only) with nothing exceeding the said
amount, while the goods of the plaintiff are high-end jewellery, as per the
e own contention of the plaintiff.
24. He submits that 80% of the business of the defendant no. 1 is not
only B2B but also confined to the State of Gujarat. It is only 20% of the
business of the defendant no. 1 that is through e-commerce websites, that
f is, Flipkart and Meesho, where, in fact, the plaintiff is not present.
25. The learned counsel for the defendant no. 1 further submits that the
plaintiff has only a single shop at Pitampura, New Delhi and, therefore,
cannot claim pan-India reputation of the mark. On the other hand, the
g
defendant no. 1 has eighty persons employed at its two manufacturing
units, four warehouses and seven offline stores. Referring to the print
outs from the websites of Flipkart and Meesho, he submits that the
h products of the defendant no. 1 are popular on these e-commerce

BATRA
18:31:39
websites and, therefore, the defendant no. 1’s products have their own
reputation among a specific stratum of society. Between 31.05.2021 to
22.05.2022, the target consumers viewed the defendant no.1’s products
b
60.14 Crore times, made 1.82 Crore clicks on its product listings and
purchased 1.89 Lakh units of its products translating to gross sales of Rs.
8.66 Crore on Flipkart alone. The defendant no.1’s gross sales between
c the period of December, 2020 to April 2022 was Rs. 13,30,84,966.80. He

submits that the defendants, therefore, have developed tremendous
goodwill and reputation in its mark.
26. He submits that the submission of the plaintiff that it hired Ms.
d Janhvi Kapoor for showcasing its product is misleading as Ms. Kapoor
had modeled for designer Punit Balana’s new lehenga collection and had
worn the plaintiff’s jewellery as accessories only.
27. He further submits that various other marks which had
e
‘VASUNDHRA’ as the essential feature have been registered for various
classes of goods, the details whereof are given by the defendant no. 1. He
submits that, therefore, the plaintiff cannot claim any exclusive right to
the word ‘VASUNDHRA’, which is a common name in India, and
f
especially in the State of Gujarat.
28. The learned counsel for the defendant no. 1 also refers to the reply
dated 01.07.2019 submitted by the plaintiff to the Registrar of Trade
g Marks against the Examination Report, wherein the plaintiff itself claims
that the mark has to be read as a whole and being a device mark,
therefore, no confusion is caused with the other marks which also use the
word ‘VASUNDHRA’. He submits that the plaintiff cannot be allowed
h to approbate and reprobate.

BATRA
18:31:39
29. He submits that the plaintiff does not have a registration in the
word mark ‘VASUNDHRA’ but has registrations for device marks in
Class 14. On the other hand, the defendant no.1 uses its device mark for
b
goods falling in Classes 24 and 25, for which the plaintiff has not
preferred any application for registration. He submits that the defendant
no.1 is, therefore, entitled to the protection under Section 34 of the Act.
c 30. He further submits that even otherwise, the marks of the plaintiff
and the defendant no.1 are not likely to cause confusion as not only are
the two marks different, but also the marketplace, products, trade channel
are different. There is a huge difference in prices of the product and the
d target consumer is also different. In support, the learned counsel for the
defendants relies upon the judgments of the Supreme Court in Nandani
Deluxe v. Karnataka Cooperative Milk Producers Federation Limited,
(2018) 9 SCC 183; of this Court in Mittal Electronics v. Sujata Home
e
Appliance (P) Ltd, C.S.(Comm) 60 of 2020 decided on 09.09.2020 and
N. Ranga Rao & Sons Private Limited v. Sree Annapoorna Agro
Foods, 2021 SCC OnLine Mad 2916.
f
FINDINGS OF THE COURT
31. I have considered the submissions made by the learned counsels
for the parties.
32. The marks of the plaintiff which have been duly registered have
g
been reproduced hereinabove. These are all device marks and the plaintiff
does not hold any registration in the word mark ‘VASUNDHRA’.
Section 17 of the Act states that when a trade mark consists of several
h matters, its registration shall confer on the proprietor exclusive right to

BATRA
18:31:39
the use of the trade mark taken as a whole and shall not confer any
exclusive right in the matter forming only a part of the whole of the trade
mark so registered. In The Registrar of Trade Marks v. Ashok Chandra
b
Rakhit Ltd., (1955) 2 SCR 252, the Supreme Court held that where a
distinctive label is registered as a whole, such registration cannot possibly
give any exclusive statutory right to the proprietor of the trade mark to
c the use of any particular word or name contained therein apart from the
mark as a whole. The proprietor of the mark cannot expand the area of
protection granted to the mark. The Division Bench of this Court in
Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt.
d Ltd., 2011 SCC OnLine Del 288, reiterated that the distinctiveness to
which the registered proprietor of a mark can lay a claim is to what it has
gotten registered as a whole and such registration cannot possibly give an
exclusive statutory right to such proprietor qua a particular word of
e
common origin.
33. Though it is equally well settled that for device mark, the essential
feature of the same is equally entitled to protection [Ref:- South India
Beverages Pvt. Ltd. v. General Mills Marketing India, (2015) 61 PTC
f
231 (Del)], at the same time, it has to remembered that in extending such
protection, the party does not lay a claim of exclusivity in a mark to
which otherwise he would have been unable to do so. The possibility of
g the proprietor attempting to expand the operation of his trade mark
cannot be ignored or overlooked. [Ref:- The Registrar of Trade Marks
vs. Ashok Chandra Rakhit Ltd. (supra)].
34. While considering the claim of exclusivity to the word
h ‘VASUNDHARA’ the claim made by the plaintiff before the Registrar

BATRA
18:31:39
of Trade Marks though may not act as an estoppel as held by this Court in
Telecare Network India Pvt. Ltd. (supra), it would still be a relevant
consideration. Before the Registrar of Trade Marks, the plaintiff had
b
sought to distinguish other cited marks with word ‘VASUNDHRA’ by
contending that the mark as a whole has to be considered. The plaintiff
cannot be allowed to approbate and reprobate.
c 35. As far as defendant no.1’s application seeking registration of the

trade mark is concerned, equally the defendant no.1 would not be able to
claim any exclusive rights over the word ‘VASUNDHRA’.
36. As far as the claim of passing off is concerned, in Cadila Health
d Care Ltd. vs. Cadila Pharmaceuticals Ltd., 2001 PTC 300 (SC), the
following test for deciding the question of deceptive similarity was laid
down:-
e “35. Broadly stated in an action for passing-off

on the basis of unregistered trade mark generally
for deciding the question of deceptive similarity
the following factors are to be considered:
a) The nature of the marks i.e. whether the

marks are word marks or label marks or
f composite marks i.e. both words and label works.
b) The degree of resembleness between the

marks, phonetically similar and hence similar in
idea.
g c) The nature of the goods in respect of

which they are used as trade marks.
d) The similarity in the nature, character

and performance of the goods of the rival traders.
e) The class of purchasers who are likely to

h buy the goods bearing the marks they require, on

BATRA
18:31:39
their education and intelligence and a degree of

care they are likely to exercise in purchasing
and/or using the goods.
b f) The mode of purchasing the goods or

placing orders for the goods.
g) Any other surrounding circumstances

which may be relevant in the extent of
dissimilarity between the competing marks.”
c
37. Let me now apply the above test to the facts of the present case.
38. In the present case, the fact that the plaintiff does not have a
registration in the word mark ‘VASUNDHRA’, while has obtained
d
registration in the various marks of which ‘VASUNDHRA’ is an
essential part would have to be looked into for determining the balance of
convenience and the effect thereof. Equally, the fact that
‘VASUNDHRA’ is a common name in India would be an important
e consideration to be kept in view while deciding the claim of exclusivity
made by the plaintiff. Though ‘VASUNDHRA’ cannot be said to be
descriptive of the goods of the plaintiff or the defendant no.1, at the same
time, it would have to be considered whether the plaintiff has been able
f
to make out a case for grant of injunction across all goods or for the
goods that are in question in the present suit.
39. The goods of the plaintiff and the defendant no.1 are not identical,
however, can be said to be remotely cognate to each other. [Ref:- SIA
g
Gems and Jewellery Pvt. Ltd. (supra)].
40. When compared as a whole, though phonetically the two marks are
identical, visually they are different as the plaintiff’s mark has a symbol

BATRA
18:31:39
‘V’ alongwith the word ‘VASUNDHRA’, while the defendant no.1 has a
picture of a leaf alongwith word ‘VASUNDHRA Fashion’.
41. It would also have to be considered that the plaintiff has only one
b
store at Delhi, while the defendant no.1 herein claims to have two
manufacturing units, four warehouses, and seven offline stores. Its goods
are available also online at Flipkart and Meesho, where the plaintiff is not
c present. As contended by the learned counsel for the defendant no.1, the
goods of the defendant no.1 are aimed at persons belonging to lower
strata who are looking for cheaper garments while the goods of the
plaintiff are claimed to be designer jewellery aimed at persons belonging
d to the higher strata of the society. In any case, the goods of the defendant
no.1 are in Classes 24 and 25, in which the plaintiff does not have any
registration.
42. As the plaintiff is dealing in jewellery, its turnover may sound
e
enormous, but that alone may not be sufficient to, at least at this stage,
presume that the mark has obtained such reputation and goodwill so as to
be associated only with the plaintiff and for even other goods.
43. Keeping in view the above parameters, in my view, the plaintiff
f
has not been able to make out a prima facie case for grant of prohibitory
interim injunction against the defendant no.1. As noted hereinabove, the
registration and use of the mark of the plaintiff is in a device of it, though
g ‘VASUNDHRA’ is a predominant part. Equally, ‘VASUNDHRA’ is a
common name in India and an exclusive right to use the same cannot be
granted to the plaintiff. The goods of the plaintiff and the defendant no.1,
though cognate, are distinct. Presently, the plaintiff has not even
h contended that it has plans of trade progression, that is, to expand its

BATRA
18:31:39
business to other goods including those of the defendant no.1. The area of
operation of the plaintiff and the defendant no.1 is also distinct; with the
plaintiff being in Delhi, while the defendant no.1 being predominantly in
b
the State of Gujarat. The defendant no.1 also has developed suitable
goodwill of the mark in its favour, as is evident from its claim of having a
gross sale of Rs. 13.30 Crore approximately between the period of
c December, 2020 to April 2022. Merely because the plaintiff deals in

jewellery items, which by themselves are more costly thereby resulting in
a higher turnover for the plaintiff, will not give a better right to the
plaintiff over an otherwise a common name in India.
d 44. The plaintiff has asserted that the defendant no.1 has also used the
following mark:-
45. The learned counsel for defendant no.1 submits that the above
mark shall never be used in future. The defendant no. 1 shall remain
g
bound by this statement.
46. For the reasons stated hereinabove, the present application is
dismissed. It is, however, made clear that any observation made
h

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18:31:39
hereinabove shall not prejudice the plaintiff in the adjudication of the suit
or trial. The same being only prima facie in nature.
CS(COMM) 363/2022
b
List the matter before the Joint Registrar (Judicial) for further
proceedings on 28th October, 2022.
c NAVIN CHAWLA, J.
SEPTEMBER 21, 2022/rv/DJ/AB

BATRA
18:31:39
TM
h
199
MANU/IC/0014/2020
Equivalent/Neutral Citation: 2020(83)PTC 83(IPAB)
BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD

DELHI REGISTRY CUM BENCH
ORA/55/2015/TM/MUM and ORA/1/2016/TM/MUM
Sun Pharma Laboratories Limited and Ors. Vs. Agila Specialties Private Limited and Ors.
Manmohan Singh, J. (Chairman) and Dr. Onkar Nath Singh, Member (T) (PVPAT)
Counsels:
For Appellant/Petitioner/Plaintiff: Hemant Singh, Mamta Jha and Aditya Verma
For Respondents/Defendant: Aditya Verma, Hemant Singh and Mamta Jha
ORDER
Manmohan Singh, J. (Chairman)
By this common order, I propose to decide the following two petitions:
1 . The rectification petition being ORA No. 55/2015/TM/MUM has been filed by Sun
Pharma Laboratories Ltd.(For short Sun Pharma) for removal of the trade mark SOXPLAT
registered under trade mark registration no. 1550804 dated 18/4/2007 in class 05 from
the Register of Trade Marks. The petition was filed on 28/10/2014 on the basis of Sun
Pharma's prior registration and use of the distinctive trade mark OXIPLAT bearing trade
mark registration no. 1003586 dated 16/4/2001 in class 05.
2 . The second rectification petition being ORA No. 1/2016/TN/Mum has been filed by
Mylan Pharma Lab. Ltd.(hereinafter referred to as Mylan) on 2/9/2015 as counterblast to
the rectification petition filed by Sun Pharma, alleging that Sun Pharma's trade mark
OXIPLAT lacks distinctiveness as it is taken from the salt for the drug namely
"Oxaliplatin".
3. Both parties have argued the petitions and have also filed the written submissions
4. Case of Sun Pharma about the use of trade mark OXIPLAT.
(i) The trade mark OXIPLAT of Sun Pharma is a coined and inherently
distinctive trade mark adopted in the year 2001 and has been used on an
extensive and continuous commercial scale in relation to Sun Pharma's drug for
colon/rectal cancer comprising the salt "Oxaliplatin". Reliance is placed on the
following documents:
* Exhibit AW-1/4 in ORA 55/2015 : Copies of sales invoices showing
sale of OXIPLAT by Sun Pharma for the period 2001 to 2014 (page 42-
90 of ORA 55/2015)
(ii) On account of extensive commercial use of the trade mark OXIPLAT by Sun
Pharma, the same has acquired formidable goodwill and reputation as a badge

200
of quality for cancer drug originating from Sun Pharma. The goodwill and
reputation that the trade mark OXIPLAT has come about to acquire is evident
from the fact that from the period 2001 to 2014, the total sales of OXIPLAT
cancer drug have been in excess of INR 26.56 Crores. During the same period,
Sun Pharma has spent more than INR 1.32 crores on promotion of the same.
Pertinently, Sun Pharma had made sales of OXIPLAT drug in excess of INR 8.81
Crores by 2007 i.e. year of adoption and applying for registration of the
impugned and deceptively similar mark SOXPLAT. Reliance is placed on the
following documents:
* Exhibit AW 1/6 in ORA 1/2016: Copy of Chartered Accountant
Certificate dated 3/11/2014 certifying sales of Sun Pharma's OXIPLAT
drug for the period August 2001 to March 2014 (Page 52-56 of Counter
Statement in ORA No. 1/2016)
(iii) The trade mark OXIPLAT of Sun Pharma is a registered trade mark under
trade mark registration No. 1003586 dated 16/4/2001 in class 05 in respect of
"medicine and pharmaceutical preparations". The same is valid and subsisting
as on date. The registration certificate is placed on record at page nos. 91-92 of
ORA No. 55/2015.
5 . It is argued by Mr. Hemant Singh, Counsel for Sun Pharma that the Mylan's trade
mark SOXPLAT is structurally, visually and phonetically deceptive similar to Sun
Pharma's prior used and prior registered trade mark OXIPLAT. The only difference is
addition of letter 'S' to the prior registered trade mark OXIPLAT which does not change
the phonetic sound of 'OXIPLAT' where the marks are compared as a whole. Further, the
impugned mark has been registered in respect of the same goods being "medicinal and
pharmaceutical preparations". Hence, it is a case of similarity of trade marks and
identity of goods where the Mylan has appropriated the entire trademark of the Sun
Pharma. Therefore, use of the impugned mark is likely to cause confusion and deception
in the minds of consumers at large and the members of the trade on account of
imperfect recollection. The copy of online status and publication in Trade Marks Journal
of the impugned registration of SOXPLAT are at page nos. 93-94 of ORA No. 55/2015 is
placed on record..
6. It is also submitted on behalf of Sun Pharma that Sun Pharma is the prior registered
proprietor of the trade mark OXIPLAT and has the exclusive right to use thereof in
respect of medicinal and pharmaceutical preparations under section 28 of the Act. That
being so, the use of the mark OXIPLAT or any other deceptively similar mark such as
SOXPLAT by any unauthorized party would amount to infringement of trade mark under
Section 29(1) of the Act and also is in breach of Section 11(1) which prohibits grant of
registration of a mark similar to earlier mark for same or similar goods.
7 . It is alleged that the registration of the impugned mark SOXAPLAT by Mylan is
contrary to Section 11(1) of the Act, being a deceptively similar mark in respect of
identical goods.
8 . Brief facts by Mylan and its Trade mark SOXAPLAT On the basis of said facts and
pleadings, the counsel for Mylan has addressed the arguments. Counsel has alleged that
Sun Pharma has no case. Even the interim orders were refused in a suit filed by Sun
Pharma. It is stated that Mylan acquired Agila Specialities Ltd. in 2013 and vide an
order of the Hon'ble High Court, Hyderabad, Aglia was dissolved. Copy of order dated
24th August, 2014 at pages 63-83 (Annexure A of the counter statement).

201
9 . It is admitted position that the originally M/s. Strides Arcolab Ltd. filed an
application for the registration of the word mark SOXPLAT on 18th April, 2007 bearing
application no. 1550804(Annexure 1 at page 125(TM-1 of the counter statement). Post
the registration of the said trademark, the same was assigned to Agila Specialities Ltd.
pursuant to an appropriate request before the trademark registry on 4th May, 2011. The
same was allowed vide order dated 19th February, 2014 (Annexure 1 at page 124 of the
counterstatement. Statis extract evidencing the aforesaid). Thereafter, Mylan filed a TM
33 to change the name of the registered proprietor of the trademark SOXPLAT to Mylan.
(Annexure B at page 51 of the counterstatement).
10. It is submitted on behalf of Mylan that the mark SOXPLAT was cointed in April 2007
by Strides which is inherently distinctive as it has no dictionary meaning and was
created by Strides by juxtaposing the first letter of its name i.e. "S" from Strides with
an abbreviated version of the name of the active ingredient/salt OXALIPLATIN. The said
drug is used to treat colon or rectal cancer that has spread(metastasized). It is
administered intravenously and there is no pill or oral ingestible version of the drug.
Commercial use began since 2009 and total sales of products under the trade mark
SOXPLAT is Rs. 2.94 crores. (Annexure H and J at page 118-123, 130-131 of the
counterstatement).
11. It is alleged that the mark of Sun Pharma, OXIPLAT, is devoid of any distinctive
character as per Section 9(1) of the Trade Marks Act, 1999. No monopoly or exclusive
right can be granted to Sun Pharma for the mark OXIPLAT as the same is a mere
abbreviation of the active salt which is OXALIPLATIN. An abbreviation of this nature i.e.
based on the generic name of the salt certainly can not be allowed to be misused by a
party and hence Sun Pharma cannot seek any exclusive rights over the same. The
following decisions were cited in support of here submissions.
a) M/s. Bioforma Vs. Sanjay Medical Stores, MANU/DE/0819/1997 : 1997
PTC(17) (Delhi High Court) para 19
b) Schering Corporation Vs. Alkem Laboratories, MANU/DE/3179/2009 :
2010(42) PTC 772(Del), (DB); Para 36
12. It is also submitted that it is a common practice in pharmaceuticals, to name a drug
on the basis of the name of its active chemical compound or salt, or the disease it seeks
to remedy, or the particular organ it is intended to treat and the name of such an
ingredient/salt or compound, ailment or organ is in public domain and of generic nature
and no one party can claim an exclusive right over the said name. The following
judgments are referred in support of case.
a) Astrazeneca UK Ltd. &Anr Vs. Orchid Chemicals & Pharmaceuticals Ltd.,
MANU/DE/0869/2007 : 2007(34) PTC 469(DB), (Del), para 20 and 21
b) Schering Corporation Vs Alkem Laboratories, MANU/DE/3179/2009 : 2010
(42) PTC (Del), (DB); para 36
c) First Syllable different - marks dissimilar
13. It is argued that the Sun Pharma's trademark OXIPLAT entirely derived from the
active sale OXALIPLATIN merely deleting the 3rd and the 4th letter (AL) and the last two
letters (IN). It is well settled that when a mark is derived from the common generic salt
(OXALIPLATIN in the present case), no single proprietor can claim exclusive right over
the said mark. (Section 17(2) of the Trademarks Act, 1999) Abbreviation of a generic

202
word/salt will also be generic. In support of her submissions the following judgments
were relied upon.
a) Indo-Pharma Pharmaceuticals Works Ltd. Mumbai Vs. Citadel Fine Pharmaceuticals
Ltd. Madras, MANU/TN/1178/1998 : 1998 (18) PTC (DB)(Mad) at paras 42, 42, 55 and
56
McCarthy in Trademarks and Unfair Competition (Third Ed n. Vol. 2)
The name of the product and service itself - what it is - is the very antithesis of a mark.
in short, a generic name of a product can never function as a trademark to indicate
origin. The terms "generic" and "trademark" are mutually exclusive..... The concept of
"generic", it can never function as a mark to identify and distinguish the products of
only one seller (para 12.01)
b) Adopting the name of a generic drug/salt for a trademark is one thing and 'inventing'
the trademark based on the name of a generic drug is another thing entirely. In the
present case, Sun Pharma has evidently adopted the generic salt name as a trademark,
which they cannot be allowed to do.
Case laws referred
* Apex Laboratories Limited v. Zuventus Health Care Limited
MANU/TN/9346/2006 : (2006(33) PTC 492(MAD) at para 5
c) It is submitted that no exclusive right can be granted to a mark which is based on the
generic name of drug/salt. At best, right can be to the added features which
differentiate the trademark from the name of the generic drug. The following decisions
were cited.
i) Panacea Biotec Ltd. v. Recon Ltd. MANU/DE/0753/1996 : 1996(16) PTC
561(Del) Para 10
ii) Schering Corporation Vs. United Biotech (P) Ltd. MANU/MH/1240/2010 :
2011(1) Bom CR 89, para 12
14. It is alleged that it is well settled law that if a party chooses to use a generic,
descriptive, laudatory or common word as a trademark, the said trademark will not be
accorded with any protection or exclusively in the use of such words. Thus under those
circumstances, either the trademark is enforceable in infringement suit nor prayer for
rectification can be granted rather, the parties claiming rights, their trademarks should
be removed from the register.
* The reliance is placed in the matter of Schering Corporation vs. Alkem Laboratories
Ltd.; MANU/DE/3179/2009 : 2010(42) PTC 772(Del.)(DB) at para 35
1 5 . The next argument addressed on behalf of Mylan is that there are many third
parties which are using the abbreviation of salt OXALIPLATIN as a part of the trademark
and hence it is common to trade. Several third parties are using the prefix OXI and
suffix PLAT as part of their trademark therefore the is generic and publici juris. A table
with the list of over 17 third parties who are using the prefix OXI and suffix PLAT as
part of their trademark has been provided in para N of the counterstatement and at
pages 132-140 of documents. Section 17(2)(b) of the trademarks Act.
The details of a few of the companies who are using the aforesaid prefix and suffix

203
alongwith the registration details are provided herein below:-
The following decision is relied upon on this aspect:

Hardie Trading Ltd. and Ors. Vs. Addisons Paint and Chemicals Ltd.
(12.09.2003-SC) : MANU/SC/0705/2003
"A trade mark is a commercial asset intended to be used commercially
by business men, and it seems to me that "special circumstances" have
to be understood and applied in a business sense"
1 6 . It is also stated that Sun Pharma's and Mylan's product are sold only against
doctor's prescription (Schedule H drug) not as an over the counter medicine. Further the
products are administered also by highly skilled cancer therapist. Therefore, there is no
likely hood of confusion or deception and the test of imperfect recollection of ordinary
consumers is inapplicable. The following decisions are referred in support of her
arguments:
a) M/s. Biofarma Vs. Sanjay Medical Stores, MANU/DE/0819/1997 : 1997 PTC
(17) (Delhi High Court) para 21
b) Schering Corporation Vs. Alkem Laboratories Ltd.; MANU/DE/3179/2009 :
2010 (42) PTC 772 (Del)(DB) at para 42 & 45
c) Astrazeneca UK Ltd. &Anr. Vs. Orchid Chemicals & Pharmaceuticals Ltd.
MANU/DE/0869/2007 : 2007 (34) PTC 469 (DB), (Del), para 22.
It is also alleged that customers would pay more attention to the uncommon feature of
the mark if the common feature is descriptive and publici juris.
Case Laws are referred as under:
i) M/s. Bioforma Vs. Sanjay Medical Stores, MANU/DE/0819/1997 : 1997
PTC(17) (Delhi High Court) para 19
ii) Astrazeneca UK Ltd. & Anr Vs. Orchid Chemicals and Pharmaceuticals Ltd.,
MANU/DE/0869/2007 : 2007(34) PTC 469(DB), (Del), para 21.
17. Lastly, it is submitted that since Sun Pharma's mark OXIPLAT is an abbreviation of
the generic salt and there is no new or invented or distinctive part in the said mark, the
said mark should be rectified and removed from the Register of Trade Marks. Any
Mylan's mark SOXPLAT is a coined mark (derived from the generic salt and by adding S
i.e. first letter of the company name, Strides) and in thus invested mark. Mylan's said

204
mark is inherently distinctive as it has no dictionary meaning, hence the same is entitled
to protection.
18. From the pleadings of both parties, documents placed and addresses of arguments,
there are admission positions in the maters which are outlined as under:
a. The Sun Pharma is the earlier user of the trademark OXPLAT which is being
used since 2001 even as per evidence available on record.
b. The drug used by both parties is being used for treatment of cancer.
c. The generic name is OXALPLATIN.
d. The area of use of both products of the parties is the same.
e. The drug of both parties are being under doctor's prescription.
f. That Mylan is the subsequent user of product for the same purposes.
g. Third parties user are all subsequent user. Noting has been proved by the
Mylan. No documentary evidence or affidavit of any third party has been
produced/filed in order to show that third party is the prior adopter or used.
Most of the third parties details would show that the trademark applied as
proposed to be used and where the user is claimed, the same is 2006 which
subsequent to the use of Sun Pharma.
h. Mylan started using the trademark SOXPLAT since 2009 as per statement but
there is no cogent evidence has been produced.
i. The date of application and user of Sun Pharma trademark OXPLAT is much
prior to the application of the Mylan or third parties.
1 9 . It is submitted on behalf of Sun Pharma that the impugned mark SOXAPLAT is
deceptively similar to Sun Pharma's trade mark OXIPLAT on account of overall structural
and phonetic similarity when "compared as a whole" and when examined from the point
of view of a man with "average intelligence" and "imperfect recollection" and not having
the drugs together for side-by-side comparison. The competing marks are:
SUN PHARMA : MYLAN
OXIPLAT : SOXPLAT
Let me discuss the matter on this aspect as well as the other issue raised on behalf of
Mylan
2 0 . In Cadila Health Care Limited Vs. Cadila Pharmaceuticals Ltd. reported in
MANU/SC/0199/2001 : 2001 AIR Supreme Court page Nos. 1952, it is rightly observed
that the Drugs are poisons and not sweet and confusion between medicinal products
may, therefore, be life threatening, not merely inconvenient.
It is also correctly laid down that where medicinal products are involved, the test to be
applied for adjudging the violation of Trade mark law may not be at par with the cases
involving non-medical products and a stricter approach should be adopted while
applying the test to judge the possibility of confusion of one medicinal product for
another by the consumer.

205
The fact that a drug is sold under prescription or only to physicians can not itself be
considered a sufficient protection against confusion.
The physicians and pharmacists are trained people yet they are not infallible and in
medicines, there can be no provisions for mistake since even a possibility of mistake
may prove to be fatal.
20.1. Actually when the Cadila judgment was rendered in 2001, forty one years earlier,
also in the case of Corn Product Refining Company Vs. Shangrila Food Products Limited
reported in MANU/SC/0115/1959 : AIR 1960 Supreme Court 142 wherein it was held
that in deciding the question of similarities between the two marks, the right approach
is to form the point of view of a man of average intelligence and of imperfect
recollection. To such a man the overall structural and phonetic similarly and the
similarity of the idea in the two marks is reasonably likely to cause a confusion between
them. It was also held that it is well recognised that in deciding a question of similarity
between two marks, the mark are to be compared as whole. The similar view was taken
in MANU/SC/0256/1962 : AIR 1963 S.C. 449 where two mark Amritdhara and
Laxmandhara held to be closely similar.
20.2. The onus to prove similar marks are already in the market by third parties and
common to trade, the burden of proof heavily lies on the party who has taken such
defense. Merely presence of such marks on the Register of Trade Marks is no proof of
its user. Party raising such defense has to prove third parties user prior in the time and
to prove that the third party has acquired a reputation by user in the market. It is not
permissible to draw any inference as to their user merely from the presence of the
marks on the Register. The same is rightly laid down the law by the Hon'ble Supreme
Court in the case of Corn Product(Supra).
20.3. Both judgments rendered by the Supreme Court are considered to be landmark
judgments as the principles laid down are followed upto dates in all pharmaceutical
cases. Many judgments referred on behalf of Mylan are rendered prior to the judgment
of Cadila(Supra) in which the law of pharmaceutical cases was re-visited and guidelines
are issued at the prevailing ground situation in the market.
21.4. On 30th October 2014 Sun Pharma Laboratories Limited filed a suit for
infringement, passing off being CS(OS)1098 of 2014 was filed before Delhi High Court
restringing Mylan from using the registered trademark SOXPLAT. After hearing the
interim application was dismissed on 07.02.2017 by the single judge in favour of Mylan.
The said order was challenged by Sun Pharma before the Division Bench who dismissed
the appeal being number FAO(OS)71 of 2017.
21.5. In the present litigation between two private pharmaceutical companies, IPAB is
to decide as whether two rival marks of parties OXIPLAT and SOXPLAT are deceptively
similar or not. No doubt when the civil suit was filed by the petitioner against the
respondent for infringement of rights, no interim was granted in favour of the
petitioner, inter alia, on the grounds that two marks are not similar and chances of
confusion will not arise. The Division Bench of the Hon'ble Delhi High Court while
dismissing the appeal of Sun Pharma has held that it was the prima facie view,
competing marks of both parties are registered, the user of Mylan since 2009 and Prima
facie no similarities.
22. As the rectification of respondent registered trademark was filed before IPAB, the
suit filed by the petitioner who is seeking cancellation of trademark of respondent, the
said some proceedings initiated by Sun Pharma were stayed till the present two

206
petitions are decided. IPAB is to decide the issues after evidence adduced produced by
the parties. On most without any influence of the orders passed by the Hon'ble High
Court which are even otherwise prima facie views.
23. Counsel for the parties admitted during the course of hearings of appeals that the
findings arrived by the single bench in Division Bench were tentatives and merely prima
facie view. It is also a matter of fact that respondent has also filed rectification of the
petitioner registered trademark after the suit filed by Sun Pharma. Counsel for both
parties have given their oral consent to argue both matters before Chairman.
24. Mylan has not denied the fact that it's predecessor had applied for a mark SOXPLAT
on the basis of distinctive mark as claimed. The propriety ship is claimed before
respondent No. 2. It is stated that it was coined from the name of the salt and is a
distinctive mark but Mylan in it's rectification challenged the trademark of the Sun
Pharma alleging, in the petition that OXIPLAT used by Sun Pharma is contrary to Section
9 and 11 and it is not distinctive mark, it would cause confusion and deception, though
it as admitted that both trademark of the parties were also coined from the name of the
salt.
2 5 . However, when the application of registration was filed, it was claimed as
distinctive and it can acquire rights of ownership but the trademark of the Sun Pharma
is not distinctive and no right of ownership can be claimed. If the Mylan and Sun
Pharma respective trademarks derived from the name of said self then now Mylan is
claiming the ownership right of the mark. It cannot be allowed not to argue just
opposite that its trade mark is distinctive whereas the earlier trade mark OXIPLAT is
descriptive and none distinctive. This aspect is dealt with in the judgment of Hon'ble
High Court in
(a) Automatic Electric Ltd. Vs RK Dhawan MANU/DE/0461/1999Â : (1999
PTC(19)81) para-16 of the judgment is reproduced below:
"16. The defendants got their trade mark "DIMMER DOT" registered in
Australia The fact that the defendant itself has sought to claim trade
proprietary right and monopoly in "DIMMER DOT", it does not lie in
their mouth to say that the word "DIMMER" is a generic expression.
User of the word "DIMMER" by others cannot be a defence available to
the defendants, if it could be show that the same is being used in
violation of the statutory right of the plaintiff."
(b) Ishi Khosla V. Anil Aggarwal MANU/DE/7192/2007 : 2007 (34) PTC 370
(Del) (WHOLE FOODS) - para 22 where the defendant has also applied for
registration of the words whole and Food who attempted to claim the trade
mark and then challenged the trade mark of the plaintiff. The said arguments
were rejected by the Hon'ble High Court.
(c) Procter & Gamble v. Anchor Health MANU/DE/1365/2014 : 2014 (59) PTC
421 (Del) (DB) - [(pg. 435 - para (xviii)] similar the position where the
defendant in U.S. obtained the registration All-Around Protection and now
claiming the user right of the mark Protection.
(d) Neon Laboratories Ltd. v. Themis Medicate Ltd. &Anr. Suit (L) No. 336 of
2014 - para 17, 21, 22. In this case, the argument in this aspect were rejected.
26. Now, it is to be considered about the similarity of the two rival marks and to be

207
decided about the phonetically deceptively similar. It is the admitted position that the
letter "I" being a vowel, in Sun Pharma's trade mark OXIPLAT would be slurred over and
does not have a prominent and distinguishing sound in pronunciation. It is evident that
Mylan's mark SOXPLAT has the whole of the applicant's registered trade mark OXIPLAT
except the letter S was added to the mark OXPLAT.
27. It is to be examined as to whether a mere addition of letter "S" in SOXPLAT neither
changes the sound of the prefix "OX" nor the sound of the mark as a whole. This is
because "S" is a singular letter and a soft consonant which does not significantly alter
the sound of the trade mark OXIPLAT and will therefore not be sufficient to avert
likelihood of confusion on account of phonetic similarity along with margin to be kept
for imperfect pronunciation and imperfect recollection in multilingual society of India.
On doubt Mylan has argued that Sun Pharma's trade mark OXIPLAT is taken from the
salt "OXALIPLATIN" and hence, the same cannot be protected. Such argument is entirely
misconceived as OXIPLAT is different to "Oxaliplatin". The prefix of the trade mark
being OXI is different to the prefix of the salt being "Oxali", and the suffix of the trade
mark PLAT is different from the suffix of the salt namely "Platin".
28. The real test for determining whether a pharmaceutical trade mark is descriptive to
ask whether an ordinary man or even a medical man will be in a position to say that the
mark is so composed unless he is so told. Reliance is placed on the judgment of Hon'ble
Delhi High Court in Win-Medicate v. Somacare Laboratories (MANU/DE/0321/1996 :
1997 PTC (17) 34). The relevant portion of the judgment is reproduced hereinbelow for
ready reference of this Tribunal:
"18. Learned counsel for the defendant has contended that in the mark
DICLOMOL prefix DICLO has been taken from DICLOFENAC SODIUM and suffix
MOL has been taken from Paracetamol which are basic drugs and as such the
mark is a descriptive mark and the plaintiff has no exclusive right for its use.
19. The mark may have been so formed but it cannot be said that an ordinary
person or even a medical man will be in a position to say that this mark is so
composed unless he is so told. The mark in itself does not convey the idea that
it is descriptive of the said basic drugs not has any dictionary meaning.
Moreover, the mark has to be considered as a whole. Applying the test laid
down in Dropovit's case (supra) as noticed above, in my view the mark
DICLOMOT is not a descriptive word not a generic word but an invented word."
2 9 . The reliance is placed on following judgments on behalf of Sun Pharma where
competing trade marks have been held to be deceptively similar, notwithstanding
Defendant's argument that the earlier trade mark for pharmaceutical/medical product
was derived from the salt or ailment or organ:

208

209
3 0 . As mentioned above, it is admitted position that Mylan is the subsequent in

adoption and user. It is also admitted position that not a single third party is the earlier
user than Sun Pharma. All the subsequent adopt or user of their respective marks.
Admittedly nothing has been proven to the contrary. Mylan in their pleadings has
admitted that the mark coined by it distinctive and ownership rights within the meaning
of Section 18 of the Act can be claimed. There is no cogent and clear evidence of 2009
on record except pleadings. Evidence on behalf of Sun Pharma since the year 2001 is
available on record.
31. It is the practice in the pharmaceutical cases to raise the defence of existence of
similar marks of third parties and common to the trade. It is also the practice of
pharmaceutical companies to file applications in routine course as a proposed to be
used by adding or deleting or deleting of letter here or there either from the name of
salt or from the name of ailments. The said issues have been discussed or decided by

210
the Supreme Court and various High Courts time and again but most of the time, it was
held that the two rival marks of the parties are to be compared as a whole.
It is not the good practice to spilt the marks of the parties for the purposes of
comparison. No doubt there are conflicting decisions in the pharmaceutical cases.
However after Cadila case (supra) all the issues are settled. Still few orders are passed
in the interim application by splitting the rival marks by taking different views were
taken.
If all the decisions are read in meaningful manner, it is evident that each case has to be
decided as per its own merit.
32. Mylan has not proved the cogent and clear evident of use of the impugned mark
SOXPLAT the year 2009, as claimed. Whereas Sun Pharma has established continuous
and extensive commercial use of the trade mark OXIPLAT since 2001 on the record.
33. Mylan has incorrectly in the proceedings that "OX" and "PLAT" are common to trade
as since Sun Pharma is not claiming any exclusive rights over the abbreviations ' OX'
and 'PLAT'. There is no pleading that Sun Pharma's trade mark OXIPLAT is common to
trade. The mere plea that a mark is common on trade without adducing any supporting
evidence is not sufficient to establish that the mark is indeed common to the trade.
Apart from the judgment already referred in the case of Corn Products (supra)
MANU/SC/0115/1959 : AIR 1960 SC 142 wherein the specific law laid down on this
issue. Mylan has failed to establish any user of third parties. The reliance is also placed
on behalf of Sun Pharma of judgment Delhi High Court in Century Traders v. Roshan Lal
Duggar MANU/DE/0153/1977 : AIR 1978 Del 250. The relevant extract of the same is
reproduced hereinunder for ready reference:
"21...It has been urged on behalf of the respondents that the mark "RAJARANI"
is common to the trade and for this purpose reliance has been placed on the
registration in Andhra Pradesh and Amritsar. There is a distinction between a
mark being "common on the register" and "common on the trade". There is no
evidence on record to show that there is actual user of this mark by any party
other than the parties before us."
34. Reliance is also placed on the following judgments:
a) Stiefel Laboratories &Anr.. v. Ajanta Pharma Ltd. - MANU/DE/1466/2014 :
2014 (59) PTC 24 (Del) - para 37. No material was produced, thus third party
defence was not accepted.
b) Pankaj Goel v. Dabur India Ltd. MANU/DE/2271/2008 : 2008 (38) PTC 49
(Del)(DB) - paras 22 and 23. The defence of third party rejected in the absence
of establishment of user prior in point of time than the main party.
35. The Supreme Court in the case of MANU/SC/2133/2007 : 2007 (35) PTC 1 (SC),
Dabur Vs. Heinz Italia, it was held that two trademarks were Glucose - D and Glucon -
D. Both products contained Glucose power. The learned Single Judge of the Punjab and
Haryana High Court had held that word Glucose being generic of the contents, no
monopoly can be granted. The learned Single Judge of the High Court had refused to
grant the injunction in this case. When this case came to the Supreme Court, the Court
in fact reversed it and granted the injunction. The ratio of the Supreme Court contained
in Para 11 reiterates Cadila Healthcare while granting the injunction and it was held that
both Glucon D and Glucose D are items containing glucose which are phonetically so

211
similar that it can easily confuse a purchaser and small changes in the packaging is
merely an attempt to continue to mislead the purchasers and to make it more difficult
for the owner to protect their mark.
36. Two rival marks to be compared as a whole. (See MANU/SC/0115/1959 : AIR 1960
SC 142, MANU/SC/0256/1962 : AIR 1963 SC 449 and MANU/SC/0197/1964 : AIR 1965
SC 980) In the case reported in MANU/SC/0256/1962 : AIR 1963 SC 449 : PTC (Suppl)
(2) 1 (SC), Amritdhara Pharmacy v. Satya Deo Gupta the Apex Court on page 458 and
Para 9 has observed as under:
"We agree that the use of the word "dhara" which literally means 'current or
stream' is not by itself decisive of the matter. What we have to consider is the
overall similarity of the composite word, having regard to the circumstance that
the goods bearing the two names are medicinal preparations of the same
description....... A critical comparison of the two names may disclose some
points of difference but an unwary purchaser of average intelligence and
imperfect recollection would be deceived by the overall similarity of the two
names...."(page 458 Para 9).
37. In the case of MANU/SC/0197/1964 : AIR 1965 SC 980, Kaviraj Pandit Durga Dutt
Sharma Vs. Navaratna Pharmaceutical Laboratories, it is held that in infringing cases
only the rival marks are to be compared by the court if the Defendant's mark is closely,
visually and phonetically similar then no further evidence is required, even if get up
packaging on the packing of two products in which they are offering their products are
different in an action of infringement, the same is immaterial.
38. In many cases anti-dissection rule has been discussed and decided various cases
and same is also to be applied in India is really based upon nature of customer. It has
been rightly set out in McCarthy on Trademarks and Unfair Competition about the said
rule particularly in Para 23.15 which is reproduced hereunder:
"23.15 Comparing Marks: Differences v. Similarities
[1] The Anti-Dissection Rule
[a] Compare composites as a Whole Conflicting composite marks are to be
compared by looking at them as a whole, rather than breaking the marks up
into their component parts for comparison. This is the "anti-dissection" rule.
The rationale for the rule is that the commercial impression of a composite
trademark on an ordinary prospective buyer is created by the mark as a whole,
not by its component parts. However, it is not a violation of the anti-dissection
rule to view the component parts of conflicting composite marks as a
preliminary step on the way to an ultimate determination of probable customer
reaction to the conflicting composites as a whole. Thus, conflicting marks must
be compared in their entireties. A mark should not be dissected or split up into
its component parts and each part then compared with corresponding parts of
the conflicting mark to determine the likelihood of confusion. It is the
impression that the mark as a whole creates on the average reasonably prudent
buyer and not the parts thereof, that is important. As the Supreme Court
observed: "The commercial impression of a trademark is derived from it as a
whole, not from its elements separated and considered in detail. For this reason
it should be considered in its entirety." The anti-dissection rule is based upon a
common sense observation of customer behavior: the typical shopper does not
retain all of the individual details of a composite mark in his or her mind, but

212
retains only an overall, general impression created by the composite as a

whole. It is the overall impression created by the mark from the ordinary
shopper's cursory observation in the marketplace that will or will not lead to a
likelihood of confusion, not the impression created from a meticulous
comparison as expressed in carefully weighed analysis in legal briefs. In
litigation over the alleged similarity of marks, the owner will emphasize the
similarities and the alleged infringer will emphasize the differences. The point is
that the two marks should not be examined with a microscope to find the
differences, for this is not the way the average purchaser views the marks. To
the average buyer, the points of similarity are more important that minor points
of difference. A court should not engage in "technical gymnastics" in an attempt
to find some minor differences between conflicting marks. However, where
there are both similarities and differences in the marks, there must be weighed
against one another to see which predominate.
The rationale of the anti-dissection rule is based upon this assumption: "An average
purchaser does not retain all the details of a mark, but rather the mental impression of
the mark creates in its totality. It has been held to be a violation of the anti-dissection
rule to focus upon the "prominent" feature of a mark and decide likely confusion solely
upon that feature, ignoring all other elements of the mark. Similarly, it is improper to
find that one portion of a composite mark has no trademark significance, leading to a
direct comparison between only that which remains."
39. It is rightly held in the recent judgment given by the Division Bench of this Court
comprising A.K. Sikri, Hon'ble Acting Chief Justice and Rajiv Sahai Endlaw, J. in the
case of United Biotech (P) Ltd. (supra) in which law pertaining to anti-dissection rule as
well as the test of deceptively similarity have been dealt with in great detail. The
Division Bench has also laid down the rules of comparison in Para 32 of the judgment.
Two rival trademarks in the matter decided by the Division Bench were ORZID and
FORZID and it was held that two trademarks are visually and phonetically similar and
would cause deception in the minds of the consumer in relation to medicine. The said
judgment has also been discussed in Stiefel Laboratories (Supra). The relevant paras of
the said judgment read as under:
"30. The law on this aspect, where the Courts are called upon to consider the
deceptive similarity between the two marks is firmly engraved in a series of
judgments pronounced by the Courts in the last half century or more. Many are
cited by the learned counsel for the appellant, note whereof is taken above.
Judgment of Supreme Court in the case of Cadila Health Care Limited (supra),
which deals with pharmaceutical preparations, is a milestone on law relating to
drugs. Application of the principles laid down in this judgment can be found in
scores of subsequent judgments of this Court and other High Courts. The
position which emerges from the reading of all these judgments can be
summarized in the following manner:
In such case, the central issue is as to whether the Defendant's
activities or proposed activities amount to a misrepresentation which is
likely to injure the business or goodwill of the Plaintiff and cause
damage to his business or goodwill. To extend this use to answer this,
focus has to be on the aspect as to whether the Defendant is making
some representation in course of trade to prospective customers which
is calculated to injure the business or goodwill of the Plaintiff thereby
causing damage to him. In the process, difference between the

213
confusion and deception is to be understood. This difference was

explained by Lord Denning in "Difference: Confusion & Deception" in
the following words:
"Looking to the natural meaning of the words, I would make
two observations: first, the offending mark must 'so nearly
resemble' the registered mark as to be 'likely' to deceive or
cause confusion. It is not necessary that it should be intended
to deceive or intended to cause confusion. You do not have to
look into the mind of the user to see what he intended. It is its
probable effect on ordinary people which you have to consider.
No doubt if you find that he did intend to deceive or cause
confusion, you will give him credit for success in his
intentions. You will not hesitate to hold that his use of it is
likely to deceive or cause confusion. But if he had no such
intention, and was completely honest, then you will look
carefully to see whether it is likely to deceive or cause
confusion before you find him guilty of infringement.
40. Hon'ble Division Bench of this Court in the case of United Biotech (P) Ltd. (supra)
after referring to various decisions including the decision referred by the Defendant's
counsel has followed the anti-dissection rule' as set out in McCarthy on Trademarks and
Unfair Competition which was not applied in the cases referred by the Defendant. In fact
the said law had been applied in India for the last five decisions by Hon'ble Supreme
Court in three judgments delivered by the Supreme Court in the cases reported in Corn
Products Refining (supra), Amritdhara Pharmacy (supra) and Kaviraj Pandit Durga Dutt
Sharma (supra).
41. McCarthy on Trademarks and Unfair Competition [J Thomas McCarthy, IV Ed., Clark
Boardman Callaghan 2007] under the sub-heading "Comparing Marks: Differences and
Similarities'. The treatise further states:
"23.15.... The typical shopper does not retain all of the individual details of a
composite mark in his or her mind, but retains only an overall, general
impression created by the composite as a whole. It is the overall impression
created by the mark from the ordinary shopper's cursory observation in the
marketplace that will or will not lead to a likelihood of confusion, not the
impression created from a meticulous comparison as expressed in carefully
weighed analysis in legal briefs."
"In litigation over the alleged similarity of marks, the owner will emphasize the
similarities and the alleged infringer will emphasize the differences. The point is
that the two marks should not be examined with a microscope to find the
differences, for this is not the way the average purchaser views the marks. To
the average buyer, the points of similarity are the more important that minor
points of difference. A court should not engage "technical gymnastics" in an
attempt to find some minor differences between conflicting marks. However,
where there are both similarities and differences in the marks, there must be
weighed against one another to see which predominate."
41. As discussed above, and after having gone through the material placed on record
and the decisions referred, it is clear that none of decisions relied upon on behalf of
Mylan is applicable to the facts and circumstances of the present case. The reasons are

214
given as under:
a). In the cases of Biofarma (supra) Indo Pharma (supra) Apex Laboratory
(supra) Panacea Biotec(supra) Schering(supra) and F Heffmann, it is evident
that all the above mentioned judgments are delivered prior to the judgment of
Cadila case (supra) in the Cadila case all guidelines in pharmaceutical cases,
comparisons rules and purchased of drugs through the medical prescription
haven changed, After the Cadila case, the trend of pharmaceutical cases is
revisited. Two more landmarks decisions were rendered accepting the principles
and guidelines of Cadila.
No prominence is given to the concept of doctor prescription in view of grounds
situation in the market. Even otherwise the concept of comparison of two rival
marks and adoption of the same from name of the salt or from ailments is
entirely revisited. The trademark of two parties in similar position ORZID and
FORZID are held to be similar in the case of United Biotec(supra) where the salt
in question was Ceftazidime was involved couple with the defense of third
parties that words ZID was the part of generic name. The said judgment was
given by the Division Bench of Hon'ble High Court of Delhi on 18.5.2012,
disagreeing with the decision of Astrazeneca (supra) and Indo Pharma (supra)
The facts in the present case are almost identical. The Hon'ble Division Bench
has confirmed the orders of IPAB.
b). As regards the other decision referred by the counsel for Mylan in the case
of Schering (supra) apart of giving the distinguishing the features in earlier
para a) it is matter of fact SMDyechem Limited vs Cadbury India Ltd. reported
in MANU/SC/0407/2000 : 2000 PTC (20) (SC) 297, the said decision of the
Supreme Court was already overruled by the Supreme Court in Cadila matter on
the reason that law already settled for the last 50 years was overlooked.
However it is surprise to note the overruled judgment was referred and the
decision was rendered. Further the case referred in the said decision of SBL vs
Himalaya Drug Company reported in MANU/DE/0311/1997 : 1997(17) PTC 540
(DB) it is matter of fact that the SBL appeal was filed against the order of
interim injunction granted against the SBL and the appeal was allowed mainly
on the reasons that the product LIVE 52 was general words. Even after trial the
suit was dismissed assigning the same reasons. However in appeal before the
Division Bench in RFA(OS) the appeal filed by Himalaya (supra) was allowed.
The judgment passed by the single bench dismissing the suit was set aside. The
Suit filed by Himalaya was decree and permanent injunction was passed against
SBL.
The rest of many judgments referred by counsel for the Mylan mentioned in this
judgment of Schering were not accepted by the recent judgment of the Division Bench
of Delhi High Court in the case of United Biotech (supra)
Therefore all the decisions referred on behalf of Mylan are distinguishable as per its on
facts and the valent decisions rendered by the Supreme Court and High Court post
Cadila case.
According none of the decisions will help the case of Mylan. Apart from above Mylan
has miserable failed to make out any case on merit in its favour.
4 2 . As regards ORA 1 of 2016 are concerned, it is false and frivolous petition. It

215
appears that it is filled as counter blast to the suit and rectification filed by Sun Pharma.
There is no merit at all in view of reasons mentioned above. The same is dismissed
43. With regards to ORA 55 of 2015, Sun Pharma has been able to make a strong case
in its favour. IPAB holds that the mark OXPLAT is coin word and was registrable. The
trade mark of the Mylan SOXCLAT is deceptively similar.
If rival trademark of both parties are compared as a whole, it is similar. Sun Pharma is
the prior in adoption and user of the Trademark than Mylan and other third parties
registration referred by Mylan.
Trademark no. 1550804 in class 5 was wrongly registered and wrongly remaining on
the Register. The entry of the said trademark offends under Section 11, 18, 32 and 57
of the Act.
4 4 . In order to maintain purity of the register, it is removed from the Register
forthwith. The respondent no 2 shall remove the entry immediately. From the record
45. Copy of order be served to Respondent no 2 for compliance.
46. Prayer in ORA/55/2015/TM/MUM is allowed and Prayer in ORA/1/2016/TM/MUM is
rejected
47. No costs.

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IN THE HIGH COURT OF DELHI AT NEW DELHI

(Intellectual Property Division – Original Civil Jurisdiction)

C.O. (Comm-IPD/TM) ____of 2023

Chavvi Poplai & Anr. … Applicants

. No. PARTICULARS PAGE No.

1. Anubhav Jain Versus Satish Kumar Jain and Ors. 01-08

2. Burger King Corporation Versus Ranjan Gupta 09-25

8. Sun Pharma Laboratories Limited and Ors. Versus 199-215

ASHISH DEEP VERMA

Advocate for the Plaintiff

Place: New Delhi

IN THE HIGH COURT OF DELHI

was permitted to be registered in favour of

25-08-2023 (Page 1 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

trademark of Respondent 1 and consequent rectification of

171/2021, invalidity of Respondent 1's trademark.

invalidity of Respondent 1's trademark has been

25-08-2023 (Page 2 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

25-08-2023 (Page 3 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

25-08-2023 (Page 4 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

25-08-2023 (Page 5 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

25-08-2023 (Page 6 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

1 57.Power to cancel or vary registration and to rectify the register.-(1) On application

25-08-2023 (Page 7 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

25-08-2023 (Page 8 of 8) www.manupatra.com Vidhisastras Advocates & Solicitors

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment reserved on : 22nd February, 2023

BURGER KING CORPORATION ..... Plaintiff

RANJAN GUPTA & ORS ..... Defendants

Signature Not Verified

CS(COMM) 229/2018 Page

c cancelled. It was observed that the first question that is required to be

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CS(COMM) 229/2018 Page

c Property Appellate Board (IPAB) and are liable to be transferred

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CS(COMM) 229/2018 Page

themselves have applied for registration of the said trademark.

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CS(COMM) 229/2018 Page

c rectification petitions, i.e., August, 2009 to August, 2014. In the said

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CS(COMM) 229/2018 Page

the court trying the suit (hereinafter referred to as the court),

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CS(COMM) 229/2018 Page

registration of the trademark is prima facie tenable. Thereupon, the Court

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CS(COMM) 229/2018 Page

invalidity are not raised.

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CS(COMM) 229/2018 Page

manner to the Registrar or the [High Court] by any person

XXX XXX XXX

d (3) An applicant shall not be entitled to rely for the purpose

Signature Not Verified

CS(COMM) 229/2018 Page

18. The aforesaid provisions were considered by the Supreme Court in

Signature Not Verified