Shyam Singh Vs. Manohar Singh and Another - Court Judgment

Order No. 155/2011

S. USHA, VICE CHAIRMAN

1. The Original Rectification Application has been filed for removal/cancellation of the trade mark Singh, Singh Mehandi Industries registered under No. 1171825 in class 3 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

2. The applicant is a leading manufacturer of Mehandi powder and cone and carrying on business since 1997. Initially, the applicants were working for others and were selling the powder in loose. In the year 2001, the applicants started to carry on the business under the trade mark “Raju Singh”. Over a period of time, the applicants trade mark had gained enormous reputation owing to the tremendous quality of the applicants products. The customers refer to and ask for “Raju Singh Mehandi”. The respondent had approached the applicant to buy the brand “Raju Singh” which was refused to by the applicant. The 1^st respondent immediately started using a new brand name “Ragu Singh”. The 1^st respondent having failed to compete with the quality and price of the applicants goods had initiated legal action against the applicant.

3. The applicants belong to the Rajput community, which is traditionally known for using Mehandi. Gradually, the Rajput community was considered as experts in preparation of Mehandi as they had perfected the art of making the right mixture to produce a dark red colour which ladies being considered aesthetic and is also thought to be auspicious. In 1997, the applicants started selling Mehandi in a small way, but as there was a good response for their products from the public, the applicants started using the same in a commercial scale.

4. “Singh” is the applicants surname and family name for centuries. The applicants sons name is “Raju Singh” and therefore had it as the trade mark. Apart from the applicants sons name it also projected his community name which is well known for its expertise in formulating Mehandi paste.

5. On 01.01.2003, the 1^st respondent issued a cease and dissect notice to the applicant from using the trade mark “Singh Mehandi Industries”. On 09.01.2003, the applicant sent a reply to the same. Thereafter, the 1^st respondent had taken an affidavit by force from the applicants that he would not use the trade mark and if used would pay damages. The affidavit was in English language which language was not known to the applicant, which is a proof to say that the affidavit was singed by the applicant by force. On 28.01.2003, the applicant issued a notice stating that the affidavit was obtained by fraud. The 1^st respondent did not reply to the same. Thereafter the applicant and the 1^st respondent was carrying on their business peacefully.

6. In February 2004, the 1^st respondent filed a suit before the City Civil Court, Bangalore in C.S. No. 822 of 2004 and obtained an ex-parte interim order and is being contested. It is pertinent to note that after an year, the 1^st respondent had filed the suit only to harass the applicant. The 1^st respondent had acquiesced the applicants use of the trade mark “Raju Singh”.

7. The applicants then came to know that the 1^st respondent has applied for registration of the impugned trade mark “Singh, Singh Mehandi Industries”. The word “Singh” is incapable of registration as it is not distinctive. “Singh” is a surname which is very common in India. It represents a sect/community and therefore not capable of acquiring distinctiveness. The mark “Singh” along with the artistic work was refused registration under No. 1263734 in class 3. Subsequently, the 1^st respondent has filed this impugned trade mark application and obtained registration. The 1^st respondent based on this registration initiated a Suit C.S. No. 399 of 2007 before the Honble High Court of Madras and obtained an interim order of injunction against the applicant. The applicant is therefore an aggrieved person as the 1^st respondent has filed a suit C.S. No. 399 of 2007 against the applicant. The applicant is a person aggrieved as he is carrying on business in the same class and also that the applicant is also carrying on business in the name of “Raju Singh”.

8. The 1^st respondent instituted a false compliant under Sections 103 and 104 of the Act against the applicant. In this connection, the Central Crime Branch sought for an opinion from the Registrar of Trade Marks and the Registrar opined that the use of “Raju Singh” is honest and bonafide in relation to the goods “Mehandi” at the time of adoption of personal name as trade mark. The 1^st respondent is preventing other traders from using their personal name on the basis of this impugned registration which is liable to be revoked.

9. The 1^st respondent has obtained this registration by playing fraud and by suppressing the fact that the earlier application for registration of the mark “Singh” word per se was refused registration, for which reason the trade mark ought to be removed. The registration is opposed under Section 9(1)(a) of the Act. The impugned trade mark “Singh, Singh Mehandi Industries” is common to trade and is being used by several other traders even before the 1^st respondent could adopt the trade mark and therefore cannot claim to be the proprietor of the trade mark under Section 18(1) of the Act.

10. The impugned registration is in violation of the provisions of Sections 9, 11, 12, 13 and 18 of the Act. The trade mark is wrongly remaining on the register without sufficient cause.

11. The 1^st respondent filed the counter statement stating that the application is motivated by bad faith, vexatious and a deliberate abuse of process of law for securing unlawful gains. The applicant is an infringer of 1^st respondents prior adopted trade mark and has been restrained from using the identical and deceptively similar trade mark. The 1^st respondent had also stated that various proceedings were initiated against the applicant and the same are pending.

12. The 1^st respondent is the pioneer in the manufacture and marketing of branded Mehandi products including Mehandi Cones, Pastes and Powders. They commenced the business under the trade mark “SINGH” in the year 1997. They are the first, true and original adopters of the trade mark in relation to Mehandi products. They are the proprietors of the trade mark under No. 1171825 in class 3 in respect of Mehandi, Kum Kum and cosmetics.

13. The impugned trade mark consists of the 1^st respondents trading style and the trade mark. The 1^st respondent has invested an enormous sum of money in the advertisement and promotion of the trade mark. They have adopted, used and promoted the impugned trade mark in order to distinguish their goods from those of others. The present application is motivated by bad faith and dishonesty.

14. The impugned trade mark is distinct and valid and deserves to remain on the register. The other averments and allegations made in the application for rectification were denied by the 1^st respondent in his counter statement.

15. We have heard Shri Akhil R. Bansali, counsel for the applicants and Shri Sivaraman Vaidyanathan, counsel for the 1^st respondent.

16. The Learned Counsel for the applicant Shri Akhil R. Bhansali submitted that the trade mark “Singh, Singh Mehandi Industries” has not acquired secondary meaning. The applicant had adopted the trade mark “Raju Singh” after the applicants sons name. They adopted the trade mark “Raju Singh” in the year 2001, when the applicant made an application for registration of the trade mark “Raju Singh”, the same was opposed by the 1^st respondent. Subsequently by force and coercion the applicant was made to sign an affidavit of undertaking not to use the trade mark “Singh”. The applicant does not know the English language and only signs in Hindi is a proof to say that the applicants signature was obtained by fraud. In the year 2004, the 1^st respondent filed a suit based on this affidavit of undertaking only to harass the applicant and obtained an order of injunction.

17. The applicant filed a suit against the 1^st respondent and the same was dismissed. The 1^st respondent filed an earlier application for registration of the mark “Singh” which was refused to by the Registrar. The counsel then relied on the opinion given by the Registrar of Trade Marks in a criminal complaint by the 1^st respondent against the applicant at page 87 of the documents filed along with the application for rectification. The Registrar has stated that “Therefore the main question will be whether the name “Singh” will be termed as a ‘trade mark. The word “Singh” means warrior and therefore all Rajputs, Punjabis and others who are living in the Northern States used to adopt the said name as suffix to their respective personal names. Hence, the name Singh is considered to be a family surname. All the accused hailed from Rajput community are like that of complainant Manohar Singh and whoever named their son with a joining of word “Singh” thereby the adoption of the personal name as trade mark such as ‘Raju Singh, Ram Singh, K.P. Singh, Veeru Singh, Sugam Singh, Sher Sing etc. are honest and bonafide in relation to goods ‘Mehandi Powder and Mehandi Cone on the line of adoption of personal name as trade mark. Hence in my point of view that nobody could claim exclusive right over the family surname ‘Singh. This is clear from the wording of section of the Trade Marks Act, 1999. Therefore in my opinion that the question of deceptive similarity in relation to a family surname ‘Singh could not be determined as it is a common family surname to all the people belonging to a particular community or as per section 35 of the Trade Marks Act.”

18. The applicant then submitted that the sales figures given by the 1^st respondent are only from the year 2000 though they claim user since 1997. The sales figures furnished at page 73 of the documents along with the counter statement cannot said to be a valid document as it has no signature of the 1^st respondent or has been certified by a Chartered Accountant.

19. The applicant had adopted the trade mark “Raju Singh” because of his son whose name is “Raju” whereas the 1^st respondent has given no reason for the adoption of “Raghu Singh”. The counsel then referred to Section 17 of the Act. The counsel also submitted that the 1^st respondent is not clear as to the date of user as in one place they claim to be using since 1997, in another it is stated to be from 2000 and in another 2003. thee are therefore different dates given.

20. The applicant relied on the judgment reported in 2002 (24) PTC 177 (Delhi) (Allianz Aktiengesellschaft Holding Vs. Allianz Capital and Management Services Ltd.) in support of his contention that the trade mark “Singh” has not acquired secondary meaning. A trade mark is said to have acquired secondary meaning only by extensive use. In this case, the trade mark “Singh” has not acquired secondary meaning as it has not been extensively used for long. The other judgments were AIR1955SC558 (The Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd.) and 2009(40) PTC393(Del) (Goenka Institute of Education and Research Vs. Anjani Kumar Goenka and Anr.).

21. In reply to the arguments of the applicants counsel, Mr. Sivaraman Vaidyanathan, counsel for the 1^st respondent submitted that the applicants counsel had relied on a Kolkata registration as the 1^st respondent failed before the Chennai Registry is not pleaded and so cannot be submitted now. The counsel then submitted that the registration was not in violation of Section 9 of the Act. As the applicants were restrained by an order of injunction, they cannot be a person aggrieved to file an application for rectification under Section 57 of the Act. He relied on the definition of trade mark under Section 2(m) of the Act.

22. The counsel then submitted that the impugned trade mark was used since 2000 and the application was filed in the year 2003. The counsel then relied on a few judgments viz.,

“MANU/1C/0028/2008 (Nitin P. Jain and Ors., Preeti Marketing Vs. Titan Industries Limited)

MANU/IC/0040/2008 (Hassan Bricks Field Vs. Shri Faim Khan, Trading as Khan Brick Works)

MANU/IC/0042/2008 (Smt. Radhika Trading as Radhika Chemical Works Vs. Shri Satish Kumar Lamba Trading as Satish Soap Mills and The Registrar of Trade Marks, Trade Marks Registry)

MANU/DE/0658/2004 (Dr. Reddys Laboratories Ltd. Vs. Reddy Pharmaceuticals Limited)

MANU/MH/0333/1988 (Bajaj Electricals Limited Vs. Metals and Allied Products and Anr.)

MANU/IC/0003/2011 (Shyam Traders Vs. Spatial Commercial (P) Ltd)

MANU/IC/0041/2005 (Palta Engineering Works Vs. Dewan Rubber Industries, Dewan Rubber Industries Limited and The Registrar of Trade Marks)”

23. We have heard and considered the arguments of the Learned Counsel and have gone through the pleadings and documents.

24. The application for rectification has necessarily to be filed by an aggrieved person alone. The term Aggrieved Person though has not been defined in the Act, it has to be liberally construed. A person in the same trade with a deceptively similar trade mark is said to be a person aggrieved. In the instant case, the 1^st respondent has filed a civil suit against the applicant and has restrained the applicant by an order of interim injunction from his using the trade mark “Raju Singh”. The applicant is therefore a person aggrieved and has a locus standi to file this application for rectification.

25. The other issue would be to consider whether the trade mark “Singh” which represents a sect/community can be said to be distinctive to be registered. A surname as a personal name is not said to be distinctive of the goods of one person. The trade mark “Singh” is used along with ones personal name and every trader has a right to use his name in trade.

26. On the commentary of Law of Trade Marks and Passing Off by P. Narayanan Sixth Edition at para 8.20, it is read as under:-

“8.20 Surnames are commonly used as trade marks. Although it is not specifically mentioned in the definition of marks, the word name would include surname and personal name”.

“The right to use surname that a man uses said Nevilla. J. is shared with every other person who has the same name, and consequently, he has got about as much monopoly in it as he has in the air that he breathes, he has to share it in common with all his fellow citizens”.

27. The above statements are being considered while dealing with the issue whether a surname is registerable in the instant case. We are of the view that the trade mark “Singh” which is a surname cannot be adapted to distinguish and capable of distinguishing the goods of all persons. The mark in general is said to be distinctive only by long use. In this case, the use of the mark is very short. The mark “Singh” is adapted to identify all persons of that community. The impugned trade mark “Singh” is therefore not distinctive and does not qualify to be registered.

28. The 1^st respondent has not denied the fact that the Registrar had refused registration for the trade mark “Singh” along with the artistic mark. The documents filed by the 1^st respondent like the bills, invoices also do not bear the trade mark “Singh” alone, the trading style “Singh Mehandi Industries” is seen in the invoices which is of the year 2000 and not earlier to that. The mark therefore cannot be said to have acquired distinctiveness by use.

29. The goods for which the mark is used and also the class of customers are to be taken into consideration. The goods are cosmetics which is being used by all classes of people. The 1^st respondent cannot claim any monopoly of the word “Singh” and deprive all individuals from using the word “Singh” as it is a common word used along with a persons name. In 1894 (11) RPC P4 in William Powell vs. Birmingham Vinegar Brewery Company it was held in regard to the mark "Yorkshire Relish" as follows:-

“Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, it appears to me he has a locus standi, to be heard as a person aggrieved.”

By the same nature, if the word “Singh” is retained/continued in the register, the rights of any person who desires to use the word “Singh” which is the name of a sect would be limited. Therefore, the said mark must be removed.

30. For the above mentioned reasons, we are of the opinion that the impugned trade mark registered under No. 1171825 in class 3 deserves to be removed from the Register. Accordingly, the application for rectification is allowed with a direction to the Registrar for necessary action.