Geep flashlight industries ltd vs the registrar of trademark

B.A.,LL.B.(HONS.) X Sem

2018-19

SUBMITTED TO: SUBMITTED BY:

Prof. AADESH KUMAR AYONIJA

(Trademark law) Roll No. 1

LAW SCHOOL B.H.U

1
ACKNOWLEDGEMENT

I Ayonija of BA.LLB (hons.) pay my gratitude to my subject teacher. Asst.

Prof. Adesh Kumar for Trademark project. Without his help this endeavour
would not have been possible. I’d also like to thank my friends & class fellows,
who helped me in understanding the topic & gathering resources for the
completion of my project. I would also like to mention that the project has
borrowed its content from various books and Website.

AYONIJA

Roll no 1

2
Delhi High Court

Geep Flashlight Industries Ltd.

vs
The Registrar Of Trade Marks

Dated - on 10 December, 1971

Equivalent citations: AIR 1972 Delhi 179

Bench: M Ansari

3
CONTENTION

The appellants filed an application before the Assistant Registrar of Trade

Marks, Delhi, for registration of the trade mark consisting essentially of the
word 'Janta' in respect of electric torches. The application was advertised in
the Trade Marks Journal. Although no objections were filed by any one against
the registration of the appellant's trade mark, the learned Assistant Registrar
declined to register the appellant's trade mark mainly on the ground that it was
not either distinctive or capable of distinguishing. The appellant seeks to
challenge the said order of the learned Assistant Registrar. The learned
Assistant Registrar was of the view that the word 'Janta' was phonetically akin
to the word 'Janta' which was word of common use and which was neither
distinctive nor capable of distinguishing the goods of the appellant.

APPELLANT’S ARGUMENT

The learned counsel for the appellant contended that the word 'Janta' is quite
distinct from the word 'Janta' and that in Hindi the word 'Janta' meant
knowledge and that it was in that sense that the word was used in the
appellant's proposed trade mark.

The learned counsel for the appellant also relied upon clause (b) of sub-section
(5) of S. 9 of the Trade and Merchandise Act which, according to him permits
the registration of a trade mark which by reason of its use is in fact adapted to
distinguish or is in fact capable of distinguishing the appellant's goods.

In this connection, learned counsel points to the following observations to the

learned Assistant Registrar:- "The total turnover for the period from 1952 to
1961 is of the order of over rupees 23 lacs which is quite impressive for a low
priced consumer article like electric torch . The Documentary evidence filed in
support of user and advertisement consists of a large number of orders and
invoices covering the advertisement cuttings from newspapers. These exhibits
clearly show that the applicants have been selling torches under the name
'Janta' from 1951 onwards and have also advertised it very extensively all over
India in various newspapers in different languages. The evidence before the
registrar shows that the trade mark 'Janta' by virtue of extensive use has in
fact come to denote the goods of the applicants to the traders and dealers in
electric torches".

4
On the basis of the above observations, the learned counsel contended that the
word 'Janta' has been associated by the public with the torches produced by
the appellant and that, therefore, by reason of the use of the trade mark, it
had in fact become adapted to distinguish or capable of distinguishing the
appellant's goods within the meaning of clause (b) of sub-section (5) of S. 9.

ISSUES RAISED

1. Is the word janta phonetically akin to the hindi word used in common
colloquy.
2. Is a trademark registrable on the basis of its long usage giving it a
unique distinctiveness.
3. The amount of discretion granted to the registrar under sec 18(4) of the
act

ANALYSIS MADE BY THE BENCH

Section 9 in The Trade And Merchandise Marks Act, 1958

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;

(e) any other distinctive mark.

5
(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.

(3) For the purposes of this Act, the expression" distinctive" in relation to the
goods in respect of which a trade mark is proposed to be registered, means
adapted to distinguish goods with which the proprietor of the trade mark is or
may be connected in the course of trade from goods in the case of which no
such connection subsists either generally or, where the trade mark is proposed
to be registered subject to limitations, in relation to use within the extent of
the registration.

(4) A trade mark shall not be registered in Part B of the register unless the
trade mark in relation to the goods in respect of which it is proposed to be
registered is distinctive, or is not distinctive but is capable of distinguishing
goods with which the proprietor of a trade mark is or may be connected in the
course of trade from goods in the case of which no such connection subsists,
either generally or, where the trade mark is proposed to be registered subject
to limitations, in relation to use within the extent of the registration.

(5) In determining whether a trade mark is distinctive or is capable of

distinguishing as aforesaid, the tribunal may have regard to the extent to
which--

(a) a trade mark is inherently distinctive or is inherently capable of

distinguishing as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the
trade mark is in fact so adapted to distinguish or is in fact capable of
distinguishing as aforesaid.

(6) Subject to the other provisions of this section, a trade mark in respect of
any goods--

(a) registered in Part A of the register may be registered in Part B of the

register; and

(b) registered in Part B of the register may be registered in Part A of the

register; in the name of the same proprietor of the same trade mark or any part
or parts thereof.

6
The effect of clause (d) of sub-section (1) and sub-section (2) is that if the
word in that trade mark has direct reference to the character or quality of the
goods, then, it shall not be registered. According to the learned Assistant
Registrar, the word 'Janta' has a direct reference to the character or quality
of the goods, because the goods bearing such a name indicate that they are
cheap in price and meant for the common man. The appellant admittedly
manufactures electric torches of various qualities and the torches bearing the
name 'Janta' are the cheapest. But these facts do not necessarily lead to the
conclusion that the word 'Janta' is descriptive of the character or quality is
descriptive of the character or quality of the goods. The price is undoubtedly
one of the factors which will be considered by the purchaser but the price
consideration would be the utility of the goods. If the goods are of poor quality
and do not serve any useful purpose, then no one would purchase the goods
notwithstanding the low price. The figures of sales of the appellant's 'Janta'
torches which even according to the learned Assistant Registrar are quite
impressive, indicate that these torches have given satisfactory performances
and it is for that reason that they are in such demand in the market. The bench
is, therefore, unable to agree with the view of the learned Assistant Registrar
that the word 'Janta' has a direct reference to the character or quality of the
goods. Therefore, the proposed trade mark of the appellant does not come
within the mischief of Clause (d) and is, therefore, not disqualified for
registration under sub-section (2) of Section 9 of the Act.

The appellant's application being one for registration of its trade mark in Part B
of the Register, the said trade mark is disqualified from registration under sub-
section (4) of S. 9 unless it is distinctive but is capable of distinguishing goods
with which the proprietor of a trade mark is or may be connected in the course
of trade from goods in the case of which no such connection subsists, either
generally or, where the trade mark is proposed to be registered subject to
limitation, in relation to use within the extent of the registration. According to
the learned Assistant Registrar, the word 'Janta' being a word of common use
is neither distinctive nor is capable of distinguishing the goods of the appellant.

Under sub-section (5) of S. 9- "In determining whether a trade mark is

distinctive or is capable of distinguishing as aforesaid, the tribunal may have
regard to the extent to which-

7
(a) a trade mark is inherently distinctive or is inherently capable of
distinguishing as aforesaid; and

(b) by reason of the use of trade mark or of any other circumstances, the trade
mark is in fact so adapted to distinguish or is in fact capable of distinguishing
as aforesaid".

The court pointed out its inclination towards agreeing with the learned
Assistant Registrar that the word 'Janta' is not inherently distinctive or
inherently capable of distinguishing.

The court paid attention to the argument of appellant counsel where it relied on
the case of Kaviraj Pandit Durga Dutt Sharma V. Navaratna Pharmaceutical
Laboratories. . That was, however, a case that was decided under the Trade
Marks Act, 1940 which contained the following proviso to Section 6 of the said
Act:-

"Provided that in the case of a trade mark which has been continuously used
(either by the applicant for the registration or by some predecessor in his
business, and either in its original form or with additions or alterations not
substantially affecting its identity) in relation to which registration is applied
for, during a period from a date prior to the 25th day of February, 1937, to the
date of application for registration, the Registrar shall not refuse registration
by reason only of the fact that the trade mark is not adapted to distinguish as
aforesaid, and may accept evidence of acquired distinctiveness as entitling the
trade mark to registration".

It was because the facts of the case before the Supreme Court fell within the
scope of this proviso that registration was granted notwithstanding the finding
that the word sought to be registered was neither inherently distinctive nor
inherently adapted to distinguish. Hence the court rejected this argument .

RELIANCE ON THE OBSERVATIONS OF FRY, L.J. and LORD SIMON

Their Lordships quoted with approval the following observations of Fry, L.J. in
the case of In Re: Dunn, (1888) 6 Rpc 379:- "It is said that the words 'Fruit-
Salt' have never been used in collocation except by Mr. Eno. Be it so I cannot
help regarding the attempt on Mr. Eno's part as an instance of that perpetual

8
struggle which it seems to me is going on to enclose and to appropriate as
private property certain little strips of the great open common of the English
Language. That is a kind of trespass against which I think the courts ought to
set their faces".

Their Lordships again quoted with approval the following observations of Lord
Simon in Yorkshire Copper Works Ltd's Application for a Trade Mark. (1954) 71
Rpc 150:- "I am content to accept the statement reiterated by their learned
counsel that the mark had acquired 100 per cent distinctiveness. I must express
my emphatic dissent from the proposition which was strenuously urged by
counsel for the appellants that distinctiveness in fact is conclusive. In my
opinion the decisions of this house in W and G case. (1913 Ac 624) and the
Glastonbury case. (1938 Ac 557) 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. 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 territory, whether country, country or town, which may be in the future, if
it is not now, the seat of manufacture of goods similar to his own".

And again at another place, their Lordships observed as follows :- "The learned
counsel is therefore right in his submission that if the right of the respondent
to the registration of his mark had to be considered solely on the terms
of Section 6 (1), the appellant's submissions as regards the non-registrability
of the respondent's mark would have great force".

CONCLUSION

As a result of the above discussion, it must be held that although the appellant
had led evidence to prove that its torches bearing the name 'Janta' have
acquired considerable reputation in the market, still the word 'Janta' is in fact
not adapted to distinguish or is in fact not capable of distinguishing the
appellant's goods.

Even if the appellant's proposed trade mark satisfies the conditions prescribed
in Section 9 of the Act, the appellant is not entitled as a matter of right to the
registration of his trade mark. It is still open to the Registrar to decline to

9
register the appellant's trade mark in the exercise of his discretion
under Section 18(4) of the Act.

18. Application for registration

(4) Subject to the provisions of this Act, the Registrar may refuse the
application or may accept it absolutely or subject to such amendments,
modifications, conditions or limitations, if any, as he may think fit.

This exercise has undoubtedly to be exercised jurdicially and not capriciously or

arbitrarily. But in this case the learned Assistant Registrar has given his
reasons for exercising his discretion against the appellant. He has observed
that the word "janta" in India has a special significance and it is used very
widely in various situations to denote or connote people or the common man and
that the word 'Janta' is one of those words which should be kept open for the
use of any person for a bona fide descriptive or trading purposes and that the
appellant should not get monopoly right over this word. In my view, these are
valid grounds for exercising the discretion vested in the Registrar under S.
18(4) or the Act against the registration of the appellant's trade mark and I do
not see any justification for interfering with the discretion of the learned
Assistant Registrar.

In the result, the court preferred to dismiss the appeal, but there shall be no
order as to costs.

10