Judgment:
(Circuit Bench Sitting at Delhi)
Honble Shri Syed Obaidur Rahaman, Technical Member:
This is an appeal against the order dated 13.12.1993 passed by the Assistant Registrar of Trade Marks refusing the application No. 421493 in class 31 for registration. The fact of the case is that one Shri Tikam Chand trading as M/s Prince Pan Centre applied for registration of trade mark GUTKA on 5th May, 1984 vide application No. 421493 in respect of pan masala included in class 31. The applicant claimed the user of the mark applied for as since 1st March, 1977. The said trade mark was advertised before acceptance in Trade Marks Journal No. 951 dated 16th January, 1989 at its page 1205. Thereafter it was felt that the mark has wrongly been advertised as the word GUTKA is a name of the product consisting of chewing tobacco. The matter was reheard on 26.04.1993 by the then Deputy Registrar of Trade Marks at the Trade Marks Registry, New Delhi. The Deputy Registrar upheld the aforesaid advertisement in the Trade Marks Journal. Later on M/s Vadilal Champaklal and Company and also Shri V.F.Shah of F.C. Shah and Company wrote separate letters to the Registrar of Trade Marks at Mumbai drawing their attention to the fact that the word GUTKA cannot be a trade mark because it is a name of tobacco based product. In addition to above some more evidences were brought to the notice of the Registrar at Mumbai like the advertisement of some trade marks in respect of the goods GUTKA and news clip published in Indian Express dated 12th October, 1997 wherein the GUTKA was termed not only as a product but also as a full fledged industry. Pursuant to the said evidence the Registrar at Mumbai issued a formal notice dated 21st October, 1997 to the attorney of the applicants communicated therein the proposal of the Registrar to withdraw the aforesaid advertisement in respect of the trade mark GUTKA advertised in Trade Marks Journal No. 951 dated 16.01.1989. The applicant was provided with the opportunity to file his reply within two months from the receipt of that notice. The applicant challenged the aforesaid notice dated 21st October, 1997 in the High court of Delhi by filing an Appeal under No. CM(M) 103/98. The said appeal was decided by the High Court of Delhi vide order dated 23rd July, 1998 wherein the Honble High Court was pleased to direct as under: -
âIt is desirable that Registrar of Trade Marks should hear the applicant as well as the alleged objectors, decide the question whether the applicant through trade âGUTKA has acquired any reputation in relation to his goods like the term âSAFI on the basis of evidence which may be produced and in the light of the fact that the word âGUTKA is not an invented word and it is being sought to be used in isolation and not with any other word. Accordingly, I do not find any further force in this petition and dismiss the same.â
2. The matter was taken up at the Circuit Bench Sitting at Delhi on 10.07.2009. Ms. Neha Kapoor and Shri Tejinder Singh learned counsel appeared for the appellant. None for the respondents. Learned counsel for the appellant submits that the Prince Gutka, appellant No. 2 is a public limited company and Mr. Haribhai Lalwani is the Managing Director of the same. In the year 1955, appellant No. 1 started a shop in Darya Ganj, Delhi by the name of âPrince Pan Centre. The trade mark PRINCE was introduced in 1971 for the sale of pan masala, ilaichi, supari mixture in small plastic containers. In the year 1977, Mr. Lalwani, son of appellant No. 1 introduced for the first time in India, small pouches for the sale of pan malasa, called GUTKA sold under the trade mark PRINCE REGISTERED UNDER NO. 414884b IN CLASS 31, which were both assigned to appellant No. 2 already accepted by the respondent No. 2. In the year 1984 (more specifically 5th May), an application was made by applicant No. 1 for registration of the trade mark GUTKA in class 34 claiming user since 1977, which was numbered as 421493. The appellant filed affidavit along with statement of sales figures at the Registry on 10.12.1987 so as to remove the objections of the examiner as to the registrability of GUTKA and after hearing and satisfaction of the Deputy Registrar the trademark was duly accepted and ordered to be advertised. The trade mark was duly advertised in Trade Marks Journal No. 951 dated 16.01.1989 on page No. 1204. since no opposition was filed within the prescribed time, the appellant was issued a notice to deposit the registration fees by way of a TM 11 which was duly done 22.01.1990 vide entry No. R/6173 and as per law, the registration process was to be completed within 12 months. On 27.12.1990 since the registration certificate was not received, an enquiry was made by the petitioners and it was brought their notice that two letters have been received by the respondent No.2 on 25th and 27th of September 1990 much after the expiration of the period of valid opposition bringing to their notice that GUTKA meant TOBACO and thus the trade mark having direct reference to the character and quality of goods could not be registered, and by reason of such invalid and informal oppositions the certificate had been withheld. The file was then sent back to the Deputy Registrar for a re-hearing after the representation of the appellants advocate and by order dated 26.04.1993, after a long and detailed hearing, the Deputy Registrar was pleased to allow the registration of the mark because of the following reasons:
âa) Wrong interpretation of the word GUTKA as meaning tobacco as opposed to its dictionary meaning of magic balls, a hand book, a manual, a sweet meat or bread.
b) Annual sales figures as attached with an affidavit dated 10th December 1997, for which reason it was allowed to proceed for advertisement in the first place.
The registration certificate was not issued even after passing of the said order in total disregard of the law as well as established procedure. Instead, the petitioner was intimated that the acceptance had been withdrawan by a letter sent to the counsel for the appellant by the Assistant Registrar, who is junior to the Deputy Registrar. An inspection of the file by the counsel for the appellant on 25.11.1997 revealed that a third party, M/s Sun Rising Fragrances Pvt. Ltd., after receiving a notice from the appellant not to infringe their mark GUTKA, approached the office and resulted in the objection being recorded against the registrability of the mark GUTKA, ignoring the reasoned order dated 26.04.1993 in favour of the appellant by the Deputy Registrar. The appellants appeal before the High Court of Delhi bearing No. CM(M) 103 of 1998 was disposed off on 23.07.1998 directing the Registrar of Trade Marks that the matter was to be decided afresh on the basis of:
a) Evidence produced by the petitioner;
b) The judgement of the Honble High Court in the case of SAFI.
By the order dated 13.12.1999 the learned Assistant Registrar of Trade Marks refused the application No. 421493 of the appellant in class 31, against which the present appeal has been filed.
3. The learned counsel for the appellant further submits that the appellant had already paid the registration fee via a valid TM 11 in respect of the said mark GUTKA of the petitioner but no registration certificate was issued for the same in total contravention of the Trade and Merchandise Marks, 1958 and accompanying rules. Respondents No. 5 and 6 were allowed to object to the registration of the said trade mark much after the expiration of the prescribed period for opposition, and the same objections were taken on record and the registration of the petitioners mark, impeded in the wake of the same. The impugned order was passed by respondent No. 1 in total disregard of the decision of the Deputy Registrar, a senior officer, passed on 26.04.1993 allowing the petitioners mark to proceed for registration, after a full hearing and reconsideration of all facts and evidence, including the affidavit of appellant No. 1 dated 10.12.1987 along with the sale figures of the impugned mark. The said order was thus against the established principles of law and procedure and is liable to be set aside on this ground alone. The respondent Nos. 2 and 4, M/s Som Fragrance Pvt. Ltd. and Zafrani Zarda and Pan Masala Association, respectively, were wrongly impleaded as parties, having no locus standi, and their objections were taken on record in total disregard of law as well as the directions of the Honble High Court in C.M. (M) 103 of 1998 in an arbitrary and colourable exercise of the discretion of the Assistant Registrar of Trade Marks i.e. respondent No. 1.
4. The learned counsel further submits that the respondent No. 1 failed to appreciate that the mark GUTKA cannot be held to be descriptive or having any direct reference to the character of goods for the simple reason that the said mark is being used by the appellant to denote pan masala falling under class 31 as opposed to tobacco or any of its specie products as covered under class 34. The objections of the respondents thus fail in entirety and the reliance of respondent No. 1 on the ratio of Vishnudas trading as Vishnudas Kishendas Vs Vazir Sultan Tobacco Company 1996 PTC (16) 512 is unjustified. The respondent No. 1 failed to appreciate that even the dictionary meaning of the word GUTKA has no connection to tobacco or any of its specie products. As illustrated, the word GUTKA stands for small globes/balls/magic balls or a handbook or a type of bread or sweetmeat and thus the word has been repeatedly wrongly interpreted and the impugned order passed on such wrong interpretation. The impugned order thus is erroneous on the face of it and is liable to be dismissed for the prejudice caused to the petitioner. The respondent No. 1 failed to appreciate that the said mark is capable of distinguishing the goods of the petitioner from those of other traders as per the provisions of section 9 (5) (b) of the Act of 1958 and thus may be registered under Part B of the register. Any ambiguity as per the application of the Act of 1958 is removed by the ratio in Nutrine Confectionery Co. Ltd. Vs Ayyan Fireworks Factory Pvt. Ltd. 2004 (29) PTC 620 (IPAB). The respondent No. 1 failed to consider the ratio of judgement in Registry of Trademarks, New Delhi v. Hamdard National Foundation (India), New Delhi AIR 1980 DELHI 180, in contravention of the directions of the Honble High court of Delhi in C.M.(M0. 103 of 1998 i.e., that âa word is not merely by reason of the fact that it is a descriptive word incapable of registration. In the afore mentioned judgment, the mark involved, SAFI, by dictionary meant pure, fine or clear, but was still allowed to proceed for registration based on its continuous use for more than 20 years. In the present case, the mark GUTKA has been used by the petitioner for over three decades. In the recent judgment of Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd. and Ors. 2008 (36) PTC 168 (Del.) popularly called the SUGAR FREE judgment learned court observed that when ascertaining whether a particular trademark has acquired a secondary meaning, usage is a valid parameter. In the light of the same, and the usage of over three decades, the mark GUTKA is capable of distinguishing the goods of the petitioner and thus the impugned order is liable to be set aside.
5. After hearing the submissions of the counsel for appellant, we are of the view that the above judgements i.e. (i) Nutrine Confectionery Co. Ltd. Vs Ayyan Fireworks Factory Pvt. Ltd. 2004 (29) PTC 620 (IPAB); (ii) Registry of Trademarks, New Delhi v. Hamdard National Foundation (India), New Delhi AIR 1980 DELHI 180 and (iii) Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd. and Ors. 2008 (36) PTC 168 (Del.) are squarely applicable to the present case on hand. In view of the above judgement in Cadila Healthcare Ltd (supra), the mark has acquired a secondary meaning. It is in use for the last three decades and the use is a valid parameter. In the light of the same and the usage of over three decades, the mark GUTKA is capable of distinguishing the goods of the appellant. Hence the impugned order is liable to be set aside. We accordingly allow the appeal. However, there shall be no order as to costs.