Vishnudas Trading as Vishnudas Kishindas Zarda Factory Vs the Vazir Sultan Tobacco Company Limited - Citation 815825 - Court Judgment

Excerpt:
- venkataswami, j.1. these two appeals preferred under section 109(5) of the trade and merchandise marks act, 1958 (hereinafter called 'the act'), read with clause 15 of the letters patent, are directed against a common order of ramanujam, j., in a.a.o. nos. 582 and 583 of 1976, dated 11.9.1980.2. the related facts leading to the filing of these appeals are as under:the respondent herein is the registered proprietor of two trade marks bearing nos.9951 and 170427, having registered them for 'manufactured tobacco' occurring in clause 34 of the fourth schedule to the trade and merchandise marks rules, 1959 (hereinafter referred to as 'the rules'). the abovesaid two trade marks were obtained on 23.12.1942 and 1.8.1959 respectively. the first trade mark, namely, the trade mark bearing no. 9951 consisted of a label with a device of charminar and a word 'charminar' along with a monogram and trading style of the respondent, while the second trade mark, namely, 170427 consisted of a label with two panels each containing the words 'vizar deluxe' and trading style of the respondent. apart from the above, one panel contains the monogram in the middle. the said two trade marks have been continuously and exclusively used by the respondents in relation to cigarettes manufactured by them, from the dale of their registration. whileso, the appellant started manufacturing of 'quiwam' and 'zarda' from 23.8.1973, adopting a trade mark consisting of the device of charminar and the expression 'charminar' along with other designs and descriptions depicted thereon. the appellant applied for registration of the said trade mark under section 18 of the act. in view of the objections raised by the respondent herein, the application of the appellant was rejected under section 12(1) of the act on 24.9.1973. while rejecting the application, the joint registrar noticed that the appellant offered to apply for rectification. consequently, the appellant preferred two applications bearing nos. mas 149 and 150 on 15.10.1973 for rectification of the registration of the respondent's two trade marks bearing no. 9951 and 170427. the relief prayed for in those two applications was for expunging or in the alternative limiting the registration of trade mark no. 9951 to 'manufactured tobacco' other than 'quiwam' and 'zarda'. a similar relief was prayed in the application gled in respect of trade mark no. 170427 as well. it may be mentioned that the main ground on which those rectifications applications were filed was on the basis of non user. in other words, the case of the appellant was that the said two trade marks had been registered without any bona fide intention on the part of the respondent to use those marks in respect of 'manufactured tobacco' except for manufacturing cigarettes and in fact there had never been any use of the marks in relation to 'manufactured tobacco' except for cigarettes either prior to or after the date of registration, and in any event upto a date of one month before the filing of the application for rectification. it was also pleaded by the appellant in support of their application for rectification that the registrations already given to the respondent are bad in law due to vague and ambiguous designation of goods, that the device of charminar appearing in both marks being a state emblem of the erstwhile nizam state, is not registrable under the act, that the application for registration of their trade marks in respect of their goods, namely, 'quiwam' and 'zarda' was opposed on the ground that the trade marks already given to the respondent will conflict with the proposed trade mark of the appellant as the respondent were given designation of goods reading as 'manufactured tobacco'. the appellant, considering themselves as aggrieved persons, contended before the registrar that they are entitled to file the applications for rectification.3. the respondent herein resisted the move of the appellant for rectification contending that they are not aggrieved persons and, therefore, the applications as such are not maintainable, that the device of charminar is not the property of the erstwhile state of nizam, that charminar is a historical monument, and as such, it is registrable under the act, that the trade marks already given being in respect of 'manufactured tobacco', will include all the goods answering to the description of 'manufactured tobacco' that since the date of registration, the appellant has been manufacturing cigarettes which will fall within the entry 'manufactured tobacco' it cannot be argued that it has not used the trade marks to enable the appellant to move for rectification, and that the appellant having failed in their move for getting independent trade mark bearing the same name and device for 'quiwam' and 'zarda', are estopped from moving the applications for rectification.4. the assistant registrar of trade marks, after giving reasonable opportunities to both parties, found that the appellant are persons aggrieved, and as. such, are entitled to move the applications for rectification. he also held that the respondent had no bona fide intention to use the trade marks in relation to goods other than cigarettes and that in fact the respondent had not used its trade mark at any time since their registration to goods other than cigarettes and that therefore the registration of the trade marks should be limited to cigarettes alone.5. aggrieved by the decision of the assistant registrar of trade marks, the respondent herein preferred appeals to this court. the learned judge, in his elaborate order, found that the learned counsel appearing for the respondent herein conceded before him that the appellant herein are persons aggrieved and as such, are entitled to move their applications for rectification. the learned judge further held as follows:.in this case the registration had not been in respect of a class of goods but in respect of one article 'manufactured tobacco' coming within the class of goods referred in class of goods referred in class 34. the appellant has been using the mark for the article for which it is registered. it is true that the appellant has not been using his trade mark for all forms of 'manufactured tobacco' or for all articles which answer that description. the court which is asked to rectify the register, however, has no power to cut out the entry 'manufactured tobacco' in class 34 and limit the registration to an article not separately treated in class 34. even though the non-user of the mark for other forms of 'manufactured tobacco' is established, nevertheless, the registration of the mark for 'manufactured tobacco' cannot be said to be illegal or improper as it is the only item in class 34 under which cigarettes could be registered. nor can such registration affect the interest of the purity of the register. in any event, in this case, the appellant has admittedly used the trade mark in relation to cigarettes which are goods of the same description 'manufactured tobacco' for which the mark is registered and this will attract the proviso to section 46 and that is a sufficient defence to the application for rectification.** ** ** this decision is an authority for the proposition that when there is registration of a trade mark for 'manufactured tobacco' in class 34, but its use is confined to cigarettes, another manufacturer of making tobacco, cigars, snuff, or chewing tobacco or any form of manufactured tobacco - all these thing being made of tobacco - cannot use the registered trade mark so as to create confusion or deception in the mind of the purchaser that the goods sold under the trade mark have been produced by the cigarette manufacturer. as already pointed out, there may not be much difficulty in upholding the use of the appellants a trade mark by the respondent in respect of the goods which are of totally different character from the articles arises when the articles manufactured are not entirely different but have a trade connection.** ** **as the legislature has not made any distinction between the various forms of manufactured tobacco, it may be taken to have intended that all forms of manufactured tobacco should be registered under a single entry 'manufactured tobacco' in class 34. though cigarettes and chewing tobacco cannot be said to be identical, still they have a trade connection as they are merely two different forms of manufactured tobacco and the user of the same or any other form of manufactured tobacco is likely to cause confusion or deception in the, minds of the public that the cigarette manufacturer is also the manufacturer of chewing tobacco or the other form of manufactured tobacco. it is true, it is not the intention of the act that a man registering a trade mark for the entire class in schedule 4 and yet only using it for one article in that class can claim for himself the exclusive right to use it for every article in that class and that a man who has registered a mark for one class cannot claim exclusive right to use in respect of articles not comprised in that class but comprised in some of the other class. if really chewing tobacco manufactured by the respondent are not goods of the same description as cigarettes as contended by the respondent, then there is no necessity for rectification of the register as sought for by the respondent. they can straightway proceed to use their trade mark without being prevented by the appellant. the difficulty has arisen in this case only because chewing tobacco and cigarettes are of the same genus 'manufactured tobacco' found in class 34 and there is likelihood of confusion or deception resulting in the purchaser of chewing tobacco believing that he is purchasing the goods of the appellant. in this case the appellant is said to have been spending more than rs. 25 lakhs every year in recent years as advertisement expenses with reference to its trade mark 'charminar' and the benefit of such advertisement at a heavy cost cannot be taken advantage of by the respondent.** ** **as already stated, because there is no separate classification for cigarettes, the registrar has no jurisdiction to register a trade mark with reference to an article not classified under schedule 4. if the registrar had altered the registration amending the entry 'manufactured tobacco' in the register as 'not excluding (sic., including) chewing tobacco' it would have been a different matter. but the registration of altered is only for cigarettes and not for 'manufactured tobacco'. for the purpose of registration of trade marks, the goods had been classified as classes 1 to 34 in the fourth schedule to the rules. rule 26(1) says that every application for registration shall be in respect of goods comprised in one class only. these provisions indicate that registration is possible only in respect of goods specified or enumerated in classes 1 to 34 of the schedule and no registration is possible in respect of an article not enumerated in any of the classes. as cigarettes have npt been specified as an article either in class 34 or in other classes, there can be no separate registration in respect of cigarettes. this ground alone is sufficient for setting aside the order of the registrar.thus, i am not inclined to uphold the order of the registrar for the following reasons: (1) he has no jurisdiction to make a sub-classification of the article 'manufactured tobacco' found in class 34. (2). to sustain registration for an article 'manufactured tobacco' in class 34, it is not necessary to establish user of the mark for forms of manufactured tobacco. (3) the rectification as ordered enables the respondent to pass off his chewing tobacco as the goods of the appellant6. the above conclusions of the learned judge are challenged before us by the learned counsel for the appellant.7. mr. b.t. scshadri submitted that the view taken by the learned judge that there cannot be separate registration in respect of 'cigarettes' underclass 34 of the fourth schedule to the rules is unsustainable. according to the learned counsel, the classification of goods mentioned in schedule 4 to the rules is based on the international classification of goods adopted by the united kingdom. france and other european countries. that classification does not and cannot contain within itself all substances or the classification of goods. therefore, the trade mark registrar had published what is known as index showing the number of substances indicating respective classes into which they fall. that index for substances is alphabetically prepared. placing reliances on the following passage from dr. venkaieswaran's laws and practice under the trade mark act, 1940, the learned counsel submits that the order of the assistant registrar, restricting the registration to 'cigarettes' based on the index is well within his jurisdiction. the passage reads thus:key to the classification of goods issued by the trade mark registry, which contains an index of a number of substances indicating the respective classes into which they fall, cannot be treated as being by itself a determination by the registrar within the meaning of the act. if a new article comes into existence, the registrar shall decide the class within which the article falls.however, he fairly submitted that the index prepared and maintained by the registrar of trade marks is not on the basis of any statutory authority. in other words, the index is a non-statutory one prepared for the guidance of the registrar of trade marks to find out under which class of goods for which registration has been applied for comes. inasmuch as 'cigarette' finds a place in the index, it is open to the registrar to restrict the registration for 'cigarettes' even though the original registration was for 'manufactured tobacco'. it is stated that the index was prepared on the basis of list published by the board of trade, london. he further contended that the contention of the learned counsel for the respondent that unless the goods are mentioned specifically in anyone of the classes in schedule 4 of the rules, the registration cannot be done in respect of these goods, is untenable. in support of this submission, he placed reliance on a passage from law and practice under t he trade mark act, 1940 - by dr. venkateswaran. it reads as follows:the registrar's decision as to the class within which any goods come is final and no appeal lies in the decision in this matter. it is the duty to allocate the class to new articles and materials as and when the necessity arises. determining the class in which a particular article should be allocated, registrar is often aware that the article possesses various properties which of themselves made possibly justified him allocating the goods to the class in which the goods possessing one of this particular properties or place, but they override consideration, which has always influenced the decision, is the question as to what the primary nature of the goods actually is.8. according to the learned counsel, the goods 'cigarettes' and 'chewing tobacco' ('quiwam' and 'zarda' manufactured by the appellant) arc not goods of the same description as concluded by the learned judge. in support of this, he again placed reliance on dr. venkaieswaran's trade and merchandise marks act, 1958. the passage relied on by him reads as follows:various tests based on practical considerat ion have been referred to in the reported cases for determining whether two sets of goods are oft he same description. test was stated by the assistant comptroller thus:consideration has to be given e.g., to the thing and characteristics of goods, their origin, their purpose, whether they are so produced by one and the same manufacturer or distributed by the same wholesale house, whether having sold in the same shop, over the same counter, during the same season under the same class or classes of customers and whether by those engaged in the manufacture and distribution of goods, they are recorded as belonging to one and same trade. no single one of this test is, however, conclusive in itself. the tribunal will also consider whether two kinds of goods might be considered as alternative to one another.page 185 under the head goods held to be not of the same description:(i) chewing tobacco and smoking tobacco (pipe and cigarettes)(ii) cigarettes and beedies.9. the last contention of the learned counsel is that in the case of rectification of trade marks on the ground of non-use, as between the conduct of the applicant for rectification and the public interest, it has always been held by courts that 'public interest' is the paramount criterion. according to the learned counsel, on this ground as well, the order of the assistant registrar ought not to have been interfered with by the learned judge. for the above said proposition, learned counsel placed reliance again on dr. venkateswaran's trade and merchandise marks act, 1958. the relevant passage reads as follows:purity of registry is of much importance to the trade in general and therefore if the applicant is a person aggrieved, the fact that his unmeritorious or fraudulent or has no market to register, will not disqualify him. thus in the stonial case the main rectification was successful, although it was held in the same judgment that the applicant had fraudulently used those words with the expressed purpose of passing of goods as the goods of the registered proprietor.lindley, l.j. - registration ought to be rectified not for the sake of applicant, but because it was the duty of court when its attention was called for improper entry upon the register, rectify it upon application being made and for the purpose of keeping the register right. (p.639 of the same book)under the head 'conduct of applicant' is irrelevant.no consideration of the right of trade person across except as against the person who is on the register because he is claiming monopoly to the exclusion of the public at large and if courts found out in course of the case that the mark is wrongly entered on the register, the court is bound to set the register right for the benefit of applicant at large. the question is one between public and registrar and proprietor and the conduct of the applicant is irrelevant to the question. in appropriate cases, the registrar may of his own, make any order for cancellation or rectification of registry under section 56(4) of the act after hearing the parties.he also placed reliance on the following decided cases: edwards v. dennis 30 ch. d. 454 thoman bear & sons v. bravan : air1935all7 , parry and co. v. perry and co. : air1963mad460 : : air1963mad460 , nestle's products v. milkmade corporation : air1974delhi40 and j. lyons and co. ltd.'s application to rectify the register in respect of trade mark no. 418.577 ('hostess') reported in 1950 r.p.c. 120.10. finally, the learned counsel submitted that in the absence of any evidence worth mentioning regarding any person being deceived on the ground that the product 'quiwam' and 'zarda' manufactured by the appellant under the trade mark 'charminar' is that of the respondent and the so called evidence tendered in the form of affidavits being parrot like and therefore not entitled to any credence, the learned judge ought to have dismissed the appeal. in support of his contention that the affidavits produced by the respondent should have been disbelieved on the basis of uniformity, he placed reliance on a judgment reported in 3 r.p.c. 54. for all these reasons, the learned counsel for the appellant submitted that the order of the learned judge is liable to be set aside and the order of the assistant registrar should be restored.11. mr. u.n.r. rao, learned senior counsel appearing for the respondent submitted that many decisions cited by the learned counsel for the appellant being rendered under old 1940 act, cannot have any binding force after the 1958 new act in view of an important change in section 8 of the new act which corresponds to old section 5. in this connection, he invited our attention to the statement of objects and reasons contained in the trade and merchandise marks act, 1958 and also certain passages from lok sabha debates. according to the learned counsel, the respondent having been given registration for 'manufactured tobacco', as set out in the fourth schedule to the rules, cannot be rectified for cigarettes' alone as done by the assistant registrar, when there is no separate entry as cigarettes' in schedule 4 to the rules. therefore, according to the learned counsel, the conclusion of the learned judge is unassailable. the learned counsel submitted that as between the schedule and the index, it is the schedule which will prevail and the index is only to find out under which clause of the schedule the goods for which registration has been applied for, can be brought under, and nothing more. he also submitted that the applications for rectification ought not to have been entertained at the instance of the appellant in view of the finding given on his application rejecting section 12(1) of the act for independent registration. in other words, having allowed the decision under section 12(1) to become final, it is not open to the appellant to reopen the same question in the rectification application. it is the contention of the learned counsel for the respondent that on the earlier occasion, the authority, while rejecting the application of the appellant under section 12(1) of the act, are taken to view that 'cigarettes' manufactured by the respondent and the 'chewing tobacco' manufactured by the appellant, will come under the same category 'manufactured tobacco' and as such, answer the same description of goods brought to the application for rectification and a contrary conclusion now reached cannot be sustained and, therefore, the learned judge rightly set aside the same. in support of this, he placed reliance on a judgment of the mysore high court in k.p. chinnakrishna setty v. ambal and co. a.i.r. 1973 mys. 74 and another judgment of the bombay high court in j.l. mehta v. registrar of trade marks : air1962bom82 . according to the learned counsel, the entry '. v. aven rubber corporation (1976) 1 p.l.r. 136. the learned counsel went to the extent of contending that strictly speaking, once the conclusion that 'cigarette' and 'chewing tobacco' are goods of the same description viz., 'manufactured tobacco' is reached, in the light of section 12(1), the necessary consequence shall be that if a registration for any one of the items under 'manufactured tobacco is also as given, the above said two same trade mark shall not be given to the manufacture of the other item or items answering the same description. it that be so, he further argues that the question of confusion or deception will go to the background or the law will presume such a confusion or deception to reject the registration or rectification, as the case may be learned counsel submitted that the cases decided under passing off action cannot be relied on for the purposes of cases to be decided under this act, in particular, relating to rectification or cancellation of registration. according to the learned counsel, the test for passing off under section 11(a) and section 27 is confusion or possibility of confusion, whereas the test for infringement under section 12(1) and under section 29 (particularly with respect to part-a, registration) confusion or the possibility of confusion in the market is not relevant. what is relevant is, whether the proposed mark is identical or deceptively similar to the mark on the register.12. mr. u.n.r. rao, in answering the criticism levelled against the stereo-typed affidavits, submitted that in the nature of things, it will be only like that, and if it is to be otherwise, that will be artificial. in support of this, he placed reliance on a judgment of this court in nestle's products (india) v. p. thankaraja : air1978mad336 . as already pointed out, learned counsel submitted that the cases decided under the old act cannot be pressed into service in the light of important changes introduced in the new act. for these reasons, according to the learned counsel, the appeals are without merits and liable to be dismissed.13. before considering the rival submissions, it is necessary and useful to set out relevant provisions the act and rules.14. section 5 of the old act (1940) reads as follows:5.(1) a trade mark may be registered only in respect of particulargoods or classes of goods.(2) any question arising as to the class within which any goods fall shall be determined by the registrar whose decision in the matter shall be final.sections 8, 12, 46, 56 of the new (1958) act and rules 22 and 26 of the 1959 rules reads as follows:8. registration to be in respect of particular goods:(1) a trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods.(2) any question arising as to the class within which any goods fall shall be determined by the registrar whose decision in the matter shall be final.12. prohibition of registration of identified or deceptively similar trade marks.(1) save as provided in sub-section (3), as no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.(2) where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the registrar may defer the acceptance the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.(3) in case of honest concurrent use or of other special circumstances which, in the opinion of the registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or near resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the registrar may think fit, to impose.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 goods in respect of which it is registered an application made in the prescribed manner to a high court or to the registrar by any person aggrieved on the ground either-(a) that the trade mark was registered without any bona fide intention, on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date of one month before the date of the application, or(b) that up to a date of 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.provided that, except where the applicant has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods if it is shown that there has been, before the relevant date or during the relevant period, as the case may be bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.(2) where in relation to any goods in respect of which a trade mark is registered-(a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-user of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in india (otherwise than for export from india), or in relation to goods to be exported to a particular market outside india; and(b) a person has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted to register such a trade mark on application by that person in the prescribed manner to a high court or to the registrar, the tribunal may impose on the registration of the first mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.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 and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.56. power to cancel or vary registration and to rectify the register : (1) on application made in the prescribed manner to a high court or to the registrar by any person aggrieved, the tribunal 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 registcr of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, by any error or defect in any entry in the register, may apply in the prescribed manner to a high court or to the registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.(3) the tribunal 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 tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them and 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.(6) the power to rectify the register conferred by this section shall include the part a of the register to part b of the register.rule 22: classification of goods : for the purposes of the registration of trade marks and of the rules, goods shall be classified in the manner specified in the fourth schedule.rule 26: application to be confined to one class, etc. : (1) every application for the registration of a trade mark shall be in respect of goods comprised in one class only of the fourth schedule.(2) in the case of an application for registration in respect of all the goods included in a class or of a large variety of goods in a class, the registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and-when it is registered.(3) applications for the registration of the same trade mark in different classes shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number for goods in more than one class, whether on conversion of the specification under rule 105 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the act.15. after a careful consideration of the rival submissions and on going through the citations given by the learned counsel on both sides and after carefully perusing the judgment of the learned judge, we find that there are authorities to support the rival submissions. but we consider that on the facts of the case, we have to decide the issue mainly placing reliance on the provisions of the act and the rules, and bearing in mind the precedents. it is an admitted fact that the respondent has been actually using the trade marks for one form of 'manufactured tobacco', namely, 'cigarettes' right from the date of registration. admittedly, again, the respondent's trade marks came under class 34 of the schedule 4 to the rules. it is a fact that the respondent has not manufactured any article answering the description of 'manufactured tobacco' other than 'cigarettes'. though a half-hearted attempt was made before the learned judge that 'cigarettes' will not answer the description of 'manufactured tobacco', the same was not pressed before us in view of the concurrent finding given by the registrar and the learned judge. in this connection, it is necessary to look into section 8 of the act and also rules 22 and 26. we have already extracted the said section and the rules. section 8 specifically states. the registration of the trade mark can be in a prescribed class of goods'. 'prescribed' means 'prescribed under rules'. rule 22 slates: 'things shall be classified in the manner specified in the fourth schedule. a conjoint reading of section 8(1) and rules 22 and 26 of the schedule 4 will clearly support the contention of the learned counsel for the respondent which has been accepted by the learned judge, that apart from classification as specified in the schedule 4, no other classification is possible for the purposes of registration of trade mark. pursuing further this line of reasoning, it is seen that no separate or independent item in the classification contained in the fourth schedule for 'cigarette'. 'cigarette' can only be brought under the entry 'manufactured tobacco' under class 34 of schedule 4. therefore, the learned judge is right in his conclusion that: 'as 'cigarettes' have not been specified as an article either in class 34 or any other classes, there can be no separate registration in respect of 'cigarettes'. this ground alone is sufficient for setting aside the order of the registrar. as the respondent was aggrieved only by the rectification of the register confining/restricting the registration of his trade marks, to v cigarettes' alone by the assistant registrar, the above conclusion was sufficient for the disposal of the appeal before the learned judge. however, in view of the arguments advanced before him, the learned judge has given further findings on the issues argued before him which necessitate us also to go into the further question argued before us.16. as regards the contention of the learned counsel for the appellant that there can be a separate registration for 'cigarettes' on the basis of index maintained by the registrar of trade marks, we are of the view that the same cannot be accepted in view of the fact that the same (index) is admittedly a non-statutory one, and in the light of the clear provisions of section 8(1) and rules 22 and 26. we have also arrived at the same conclusion while accepting the same view taken by the learned single judge. the passages on which reliance was placed by the learned counsel for the appellant, namely, the passages from dr. venkateswaran's tradeand merchandise marks act, 1958 will be of no avail as section 5 of the old act corresponding to section 8 of the new act was' in different form as contended by the learned counsel for the respondent. section 8 of the old act did not contain the words 'comprised in a prescribed class of goods'. further, the passages as extracted above, do not in any way directly support the contention of the learned counsel for the appellant. those passages are for the purpose of old section 5(2) corresponding to new section 8(2) which is an enabling provision giving the registrar the power to determine or to decide the question whenever arises as to the class within which any goods fall. we can broadly categorise the goods comprised in schedule 4 to the rules into two types, namely, particular goods and a general description of goods. for example. particular goods general description of goods wines (33) non-alcoholic drinks (32) beer (32) syrups and other preparations for making beverages (32) honey (30) gymnastic and sporting articles (28) salt (30) ornaments and decoration for christman trees (28) pepper (30) pharmaceutical substances (5) fish (29) musical instruments (15) coffee (30) furniture (20) tea (30) cosmetics (3) cocco (30) sugar (30) rice (30)(the numericals given in the brackets refer to the number of the class as given in schedule 4 to the rules). if a person applies for registration of 'cigarettes' as applied for by the respondent or for 'chewing tobacco' as applied for by the appellant, the registration will be given under class 34 for 'manufactured tobacco', as those goods answer the description 'manufactured tobacco'. in fact, as pointed out by the learned judge, the appellant himself has sought the registration only under class 34, namely, 'manufactured tobacco'. he did not apply for 'quiwam' or 'zarda'. we do not, therefore, think that we can accept the contention of the learned counsel for the appellant that the order of the assistant registrar restricting the registration of the respondent's trade marks for 'cigarettes' is in accordance with the provisions of the act. consequently, we are of the view that the order of the assistant registrar restricting the registration of respondent's trade marks for 'cigarettes' is unsustainable in law.17. the validity of the order of the assistant registrar can be considered from another angle with reference to sections 12 and 46 of the act. we have already extracted these provisions. we have already noticed that the application filed by the appellant for registration of trade mark with similar name and device, namely, 'charminar' was objected to by the respondent, and the objection was upheld by the joint registrar under section 12(1) of the act. we think that it will be useful to set out the order of the joint registrar itself. it reads thus:objection that the mark conflicted with certain registered trade marks, particularly nos. 9951, 170427 sinha says they are used in respect of cigarettes; that quiwam and zarda are goods of different description. it has been pointed out to him that they are in respect of j manufactured tobacco which takes in its ambit quiwam and zarda and therefore objection under section 12(1) cannot be waived. mr. sinha offered to apply for rectification.from the above order, it is clear that between the parties, the issue whether 'cigarettes' and 'quiwam' and 'zarda' will come under the same description of goods has been answered in the affirmative. no appeal was filed against that order. bearing this in mind, if we go to section 46 of the act, in particular the proviso, it will be clear that the applications for rectification were not maintainable. in other words, the authority concerned having given a finding that 'cigarettes', 'quiwam' and 'zarda' will come under the same description of goods, and having noticed that 'cigarettes' had already been registered under the head of 'manufactured tobacco', at the instance of the respondent, the rectification applications for restricting the said trade mark for 'cigarettes' cannot be entertained to enable the appellant to register the same trade mark for manufacture of 'quiwam' and 'zarda' which, admittedly, fall under the same description of goods. in this context only, the learned counsel for the respondent placed reliance on the judgment in in re. guttapercha of rubber manufacturing co.'s application (1909) 26 r.p.c. 428. section 26 of the english act corresponds to section 46 of our act. in that case, buckly, l.j., observed as follows:the alteration of the expression 'classes of goods' which occurred in the u.k. act of 1883, to the expression description of goods' in the u.k. act of 1883, was made designedly.the learned judge proceeded to say:the purpose of it was this; that where the goods are not of the same class, but are of the same description, taking as an instance, goods made of india-rubber, then the intention of the act of 1883 and that of 1905 is that there shall be a veto in respect as registering as identical trade mark or a similar trade mark in respect of good falling within the description, as distinguished from the class. section 19 is perfectly capable of being read, and is, i think, to be read, as if it ran thus: no trade mark shall be registered in respect of any class of goods falling within a particular description of goods, when an identical or similar mark is already on the register in respect of any goods falling within that description, it is true that a man cannot register for a description of goods, but he can register for a class of goods which fall within a particular description, and that is, i think, what section 19 was aimed at.18. another case on which reliance was placed by the learned counsel for the respondent is, 'philips' trade mark 1969 r.p.c. 78. the relevant passage in that decision reads as follows:.once it is established, as it is here, that the registered mark has been bona fide used by its proprietor in relation to goods within the classification for which it is registered, the registrar is given a discretion by section 26(1) to refuse an application for rectification of the register if he is able to hold that the goods upon which the mark has been so used, are goods of the same description as those within the classification but upon which the mark has not been actually used.after a careful review of the relevant considerations, the hearing officer found it impossible to draw any real distinction within the broad specification of medical and pharmaceutical preparations such as would isolate products not of the same description.yet another case on which reliance was placed, is, lever brothers, v. sunniwite products 1966 r.p.c. 84 in that case, it was observed as follows:.the jurisdiction conferred by section 26, however, is discretionary and it is conceded by the defendants that the particular ground of discretion indicated by the proviso to sub-section (1) of the section is relevant to the present case assuming that the circumstances are such as to warrant its application. i am satisfied that there are no principles of trade mark law that would justify me in according to the defendants' claim that the register should be rectified by removing the plaintiffs' mark in respect of substances for laundry use. there are only a few of such substances - e.g., starch, blue and the like and although on the hypothesis which i am now1 considering, soap is not one of them, it can, in my judgment, fairly be regarded, within the relevant authorities, as being 'goods of the same description'. moreover, the plaintiffs' 'sunlight' products have been for years advertised as, and became very widely known to the public as being, materials for inter alia laundry purposes. in these circumstances i do not propose to exercise the discretion which is vested in me by rectifying the register so far as substances for laundry use are concerned.we may point out that the learned single judge placed reliance on the above judgment lever brothers v. sunniwite products 1966 r.p.c. 84. therefore, we are of the view that in the light of proviso to section 46(1) of the act, and in the light of the decision rendered against the appellant under section 12(1) of the act, the applications for rectifications are not maintainable.19. as against these citations relied on by the learned counsel for the appellant, as already noticed, are mostly decided under the old act and we have expressed our view that after the coming into force of the act and in the light of the language employed in section 8 of the act in the place of old section 5, those decisions may not be of much use to the appellant. further, we agree with the reason given by the learned single judge for distinguishing those decisions in the following manner:almost all the cases referred to above in which rectification had been ordered limiting the registration to the articles for which trade mark has been used related to cases or registration for a class of articles but the use of the mark had been only to one of the articles in that class. these decisions may not therefore apply to the case on hand where the registration was for an article in a class and not for a class of articles.therefore, we do not propose to deal with those cases in detail.20. so far as the contention based on non-user is concerned, we are of the view that the learned judge, in more than one place, has overruled the same by stating that as the manufacture of 'cigarettes' comes under 'manufactured tobacco', it cannot be contended that the respondent's trade marks should be removed or restricted on the ground of non-use. we also agree with the following observations of the learned judge:it is also equally well established that if a trade mark has been registered under the general heading 'manufactured tobacco', referred to in class 34, the registered proprietor cannot be compelled to produce or deal with all goods falling under that category on pain of losing histrade mark for non-use.** ** **but as already stated, so long as separate classification has not been made in respect of the above items which are merely to be forms of 'manufactured tobacco', the registration of the appellant's trade mark in respect of 'manufactured tobacco' cannot be said to be bad.for all these reasons, we are of the view that the appellant has not made out a case for reversing the judgment of the learned single judge. consequently we dismiss the appeals. however, there will be no order as to costs.

Judgment:

Venkataswami, J.

1. These two appeals preferred under Section 109(5) of the Trade and Merchandise Marks Act, 1958 (hereinafter called 'the Act'), read with Clause 15 of the Letters Patent, are directed against a common order of Ramanujam, J., in A.A.O. Nos. 582 and 583 of 1976, dated 11.9.1980.

2. The related facts leading to the filing of these appeals are as under:

The respondent herein is the registered proprietor of two trade marks bearing Nos.9951 and 170427, having registered them for 'manufactured tobacco' occurring in Clause 34 of the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as 'the Rules'). The abovesaid two trade marks were obtained on 23.12.1942 and 1.8.1959 respectively. The first trade mark, namely, the Trade Mark bearing No. 9951 consisted of a label with a device of Charminar and a word 'Charminar' along with a monogram and trading style of the respondent, while the second trade mark, namely, 170427 consisted of a label with two panels each containing the words 'Vizar Deluxe' and trading style of the respondent. Apart from the above, one panel contains the monogram in the middle. The said two trade marks have been continuously and exclusively used by the respondents in relation to cigarettes manufactured by them, from the dale of their registration. Whileso, the appellant started manufacturing of 'Quiwam' and 'Zarda' from 23.8.1973, adopting a trade mark consisting of the device of Charminar and the expression 'Charminar' along with other designs and descriptions depicted thereon. The appellant applied for registration of the said trade mark under Section 18 of the Act. In view of the objections raised by the respondent herein, the application of the appellant was rejected under Section 12(1) of the Act on 24.9.1973. While rejecting the application, the Joint Registrar noticed that the appellant offered to apply for rectification. Consequently, the appellant preferred two applications bearing Nos. MAS 149 and 150 on 15.10.1973 for rectification of the registration of the respondent's two trade marks bearing No. 9951 and 170427. The relief prayed for in those two applications was for expunging or in the alternative limiting the registration of trade mark No. 9951 to 'Manufactured tobacco' other than 'Quiwam' and 'Zarda'. A similar relief was prayed in the application Gled in respect of Trade Mark No. 170427 as well. It may be mentioned that the main ground on which those rectifications applications were filed was on the basis of non user. In other words, the case of the appellant was that the said two trade marks had been registered without any bona fide intention on the part of the respondent to use those marks in respect of 'manufactured tobacco' except for manufacturing cigarettes and in fact there had never been any use of the marks in relation to 'manufactured tobacco' except for cigarettes either prior to or after the date of registration, and in any event upto a date of one month before the filing of the application for rectification. It was also pleaded by the appellant in support of their application for rectification that the registrations already given to the respondent are bad in law due to vague and ambiguous designation of goods, that the device of Charminar appearing in both marks being a State emblem of the erstwhile Nizam State, is not registrable under the Act, that the application for registration of their trade marks in respect of their goods, namely, 'Quiwam' and 'Zarda' was opposed on the ground that the trade marks already given to the respondent will conflict with the proposed trade mark of the appellant as the respondent were given designation of goods reading as 'Manufactured tobacco'. The appellant, considering themselves as aggrieved persons, contended before the Registrar that they are entitled to file the applications for rectification.

3. The respondent herein resisted the move of the appellant for rectification contending that they are not aggrieved persons and, therefore, the applications as such are not maintainable, that the device of Charminar is not the property of the erstwhile State of Nizam, that Charminar is a historical monument, and as such, it is registrable under the Act, that the trade marks already given being in respect of 'Manufactured tobacco', will include all the goods answering to the description of 'Manufactured tobacco' that since the date of registration, the appellant has been manufacturing cigarettes which will fall within the Entry 'Manufactured Tobacco' it cannot be argued that it has not used the trade marks to enable the appellant to move for rectification, and that the appellant having failed in their move for getting independent trade mark bearing the same name and device for 'Quiwam' and 'Zarda', are estopped from moving the applications for rectification.

4. The Assistant Registrar of Trade Marks, after giving reasonable opportunities to both parties, found that the appellant are persons aggrieved, and as. such, are entitled to move the applications for rectification. He also held that the respondent had no bona fide intention to use the trade marks in relation to goods other than cigarettes and that in fact the respondent had not used its trade mark at any time since their registration to goods other than cigarettes and that therefore the registration of the Trade marks should be limited to cigarettes alone.

5. Aggrieved by the decision of the Assistant Registrar of Trade Marks, the respondent herein preferred appeals to this Court. The learned Judge, in his elaborate order, found that the learned Counsel appearing for the respondent herein conceded before him that the appellant herein are persons aggrieved and as such, are entitled to move their applications for rectification. The learned Judge further held as follows:.In this case the registration had not been in respect of a class of goods but in respect of one article 'manufactured tobacco' coming within the class of goods referred in class of goods referred in Class 34. The appellant has been using the mark for the article for which it is registered. It is true that the appellant has not been using his trade mark for all forms of 'manufactured tobacco' or for all articles which answer that description. The Court which is asked to rectify the Register, however, has no power to cut out the entry 'manufactured tobacco' in Class 34 and limit the registration to an article not separately treated in Class 34. Even though the non-user of the mark for other forms of 'manufactured tobacco' is established, nevertheless, the registration of the mark for 'manufactured tobacco' cannot be said to be illegal or improper as it is the only item in Class 34 under which cigarettes could be registered. Nor can such registration affect the interest of the purity of the Register. In any event, in this case, the appellant has admittedly used the trade mark in relation to cigarettes which are goods of the same description 'manufactured tobacco' for which the mark is registered and this will attract the Proviso to Section 46 and that is a sufficient defence to the application for rectification.

** ** **

This decision is an authority for the proposition that when there is registration of a trade mark for 'manufactured tobacco' in Class 34, but its use is confined to cigarettes, another manufacturer of making tobacco, cigars, snuff, or chewing tobacco or any form of manufactured tobacco - all these thing being made of tobacco - cannot use the registered trade mark so as to create confusion or deception in the mind of the purchaser that the goods sold under the trade mark have been produced by the cigarette manufacturer. As already pointed out, there may not be much difficulty in upholding the use of the appellants a trade mark by the respondent in respect of the goods which are of totally different character from the articles arises when the articles manufactured are not entirely different but have a trade connection.

** ** **

As the Legislature has not made any distinction between the various forms of manufactured tobacco, it may be taken to have intended that all forms of manufactured tobacco should be registered under a single entry 'manufactured tobacco' in Class 34. Though cigarettes and chewing tobacco cannot be said to be identical, still they have a trade connection as they are merely two different forms of manufactured tobacco and the user of the same or any other form of manufactured tobacco is likely to cause confusion or deception in the, minds of the public that the cigarette manufacturer is also the manufacturer of chewing tobacco or the other form of manufactured tobacco. It is true, it is not the intention of the Act that a man registering a trade mark for the entire class in Schedule 4 and yet only using it for one article in that class can claim for himself the exclusive right to use it for every article in that class and that a man who has registered a mark for one class cannot claim exclusive right to use in respect of articles not comprised in that class but comprised in some of the other class. If really chewing tobacco manufactured by the respondent are not goods of the same description as cigarettes as contended by the respondent, then there is no necessity for rectification of the Register as sought for by the respondent. They can straightway proceed to use their trade mark without being prevented by the appellant. The difficulty has arisen in this case only because chewing tobacco and cigarettes are of the same genus 'manufactured tobacco' found in Class 34 and there is likelihood of confusion or deception resulting in the purchaser of chewing tobacco believing that he is purchasing the goods of the appellant. In this case the appellant is said to have been spending more than Rs. 25 lakhs every year in recent years as advertisement expenses with reference to its trade mark 'Charminar' and the benefit of such advertisement at a heavy cost cannot be taken advantage of by the respondent.

** ** **

As already stated, because there is no separate classification for cigarettes, the Registrar has no jurisdiction to register a trade mark with reference to an article not classified under Schedule 4. If the Registrar had altered the registration amending the entry 'manufactured tobacco' in the register as 'not excluding (Sic., including) chewing tobacco' it would have been a different matter. But the registration of altered is only for cigarettes and not for 'manufactured tobacco'. For the purpose of registration of trade marks, the goods had been classified as Classes 1 to 34 in the Fourth Schedule to the Rules. Rule 26(1) says that every application for registration shall be in respect of goods comprised in one class only. These provisions indicate that registration is possible only in respect of goods specified or enumerated in Classes 1 to 34 of the schedule and no registration is possible in respect of an article not enumerated in any of the classes. As cigarettes have npt been specified as an article either in Class 34 or in other classes, there can be no separate registration in respect of cigarettes. This ground alone is sufficient for setting aside the order of the Registrar.

Thus, I am not inclined to uphold the order of the Registrar for the following reasons: (1) He has no jurisdiction to make a sub-classification of the Article 'manufactured tobacco' found in class 34. (2). To sustain registration for an article 'manufactured tobacco' in class 34, it is not necessary to establish user of the mark for forms of manufactured tobacco. (3) The rectification as ordered enables the respondent to pass off his chewing tobacco as the goods of the appellant

6. The above conclusions of the learned judge are challenged before us by the learned Counsel for the appellant.

7. Mr. B.T. Scshadri submitted that the view taken by the learned Judge that there cannot be separate registration in respect of 'cigarettes' underclass 34 of the Fourth Schedule to the Rules is unsustainable. According to the learned Counsel, the classification of goods mentioned in schedule 4 to the Rules is based on the International Classification of goods adopted by the United Kingdom. France and other European countries. That classification does not and cannot contain within itself all substances or the classification of goods. Therefore, the Trade Mark Registrar had published what is known as Index showing the number of substances indicating respective classes into which they fall. That Index for substances is alphabetically prepared. Placing reliances on the following passage from Dr. Venkaieswaran's Laws and Practice under the Trade Mark Act, 1940, the learned Counsel submits that the order of the Assistant Registrar, restricting the registration to 'Cigarettes' based on the Index is well within his jurisdiction. The passage reads thus:

Key to the classification of goods issued by the Trade Mark Registry, which contains an index of a number of substances indicating the respective classes into which they fall, cannot be treated as being by itself a determination by the Registrar within the meaning of the Act. If a new article comes into existence, the Registrar shall decide the class within which the article falls.

However, he fairly submitted that the Index prepared and maintained by the Registrar of Trade Marks is not on the basis of any statutory authority. In other words, the Index is a non-statutory one prepared for the guidance of the Registrar of Trade Marks to find out under which class of goods for which registration has been applied for comes. Inasmuch as 'cigarette' finds a place in the Index, it is open to the Registrar to restrict the registration for 'cigarettes' even though the original registration was for 'manufactured tobacco'. It is stated that the Index was prepared on the basis of list published by the Board of Trade, London. He further contended that the contention of the learned Counsel for the respondent that unless the goods are mentioned specifically in anyone of the classes in Schedule 4 of the Rules, the registration cannot be done in respect of these goods, is untenable. In support of this submission, he placed reliance on a passage from law and Practice under t he Trade Mark Act, 1940 - by Dr. Venkateswaran. It reads as follows:

The Registrar's decision as to the class within which any goods come is final and no appeal lies in the decision in this matter. It is the duty to allocate the class to new articles and materials as and when the necessity arises. Determining the class in which a particular article should be allocated, Registrar is often aware that the article possesses various properties which of themselves made possibly justified him allocating the goods to the class in which the goods possessing one of this particular properties or place, but they override consideration, which has always influenced the decision, is the question as to what the primary nature of the goods actually is.

8. According to the learned Counsel, the goods 'cigarettes' and 'Chewing Tobacco' ('Quiwam' and 'Zarda' manufactured by the appellant) arc not goods of the same description as concluded by the learned Judge. In support of this, he again placed reliance on Dr. Venkaieswaran's Trade and Merchandise Marks Act, 1958. The passage relied on by him reads as follows:

Various tests based on practical considerat ion have been referred to in the reported cases for determining whether two sets of goods are oft he same description. Test was stated by the Assistant Comptroller thus:

Consideration has to be given e.g., to the thing and characteristics of goods, their origin, their purpose, whether they are so produced by one and the same manufacturer or distributed by the same wholesale house, whether having sold in the same shop, over the same counter, during the same season under the same class or classes of customers and whether by those engaged in the manufacture and distribution of goods, they are recorded as belonging to one and same trade. No single one of this test is, however, conclusive in itself. The Tribunal will also consider whether two kinds of goods might be considered as alternative to one another.

Page 185 under the head goods held to be not of the same description:

(i) Chewing tobacco and smoking tobacco (pipe and cigarettes)

(ii) cigarettes and beedies.

9. The last contention of the learned Counsel is that in the case of rectification of trade marks on the ground of non-use, as between the conduct of the applicant for rectification and the public interest, it has always been held by courts that 'public interest' is the paramount criterion. According to the learned Counsel, on this ground as well, the order of the Assistant Registrar ought not to have been interfered with by the learned Judge. For the above said proposition, learned Counsel placed reliance again on Dr. Venkateswaran's Trade and Merchandise Marks Act, 1958. The relevant passage reads as follows:

Purity of registry is of much importance to the trade in general and therefore if the applicant is a person aggrieved, the fact that his unmeritorious or fraudulent or has no market to register, will not disqualify him. Thus in the stonial case the main rectification was successful, although it was held in the same judgment that the applicant had fraudulently used those words with the expressed purpose of passing of goods as the goods of the registered proprietor.

Lindley, L.J. - Registration ought to be rectified not for the sake of applicant, but because it was the duty of court when its attention was called for improper entry upon the register, rectify it upon application being made and for the purpose of keeping the register right. (P.639 of the same book)

Under the head 'conduct of applicant' is irrelevant.

No consideration of the right of trade person across except as against the person who is on the Register because he is claiming monopoly to the exclusion of the public at large and if Courts found out in course of the case that the mark is wrongly entered on the register, the court is bound to set the register right for the benefit of applicant at large. The question is one between public and Registrar and proprietor and the conduct of the applicant is irrelevant to the question. In appropriate cases, the Registrar may of his own, make any order for cancellation or rectification of registry under Section 56(4) of the Act after hearing the parties.

He also placed reliance on the following decided cases: Edwards v. Dennis 30 Ch. D. 454 Thoman Bear & Sons v. Bravan : AIR1935All7 , Parry and Co. v. Perry and Co. : AIR1963Mad460 : : AIR1963Mad460 , Nestle's Products v. Milkmade Corporation : AIR1974Delhi40 and J. Lyons and Co. Ltd.'s application to rectify the Register in respect of Trade Mark No. 418.577 ('Hostess') reported in 1950 R.P.C. 120.

10. Finally, the learned Counsel submitted that in the absence of any evidence worth mentioning regarding any person being deceived on the ground that the product 'Quiwam' and 'Zarda' manufactured by the appellant under the trade mark 'Charminar' is that of the respondent and the so called evidence tendered in the form of affidavits being parrot like and therefore not entitled to any credence, the learned Judge ought to have dismissed the appeal. In support of his contention that the affidavits produced by the respondent should have been disbelieved on the basis of uniformity, he placed reliance on a judgment reported in 3 R.P.C. 54. For all these reasons, the learned Counsel for the appellant submitted that the order of the learned Judge is liable to be set aside and the order of the Assistant Registrar should be restored.

11. Mr. U.N.R. Rao, learned senior counsel appearing for the respondent submitted that many decisions cited by the learned Counsel for the appellant being rendered under old 1940 Act, cannot have any binding force after the 1958 new Act in view of an important change in Section 8 of the new Act which corresponds to old Section 5. In this connection, he invited our attention to the Statement of Objects and Reasons contained in the Trade and Merchandise Marks Act, 1958 and also certain passages from Lok Sabha Debates. According to the learned Counsel, the respondent having been given registration for 'manufactured tobacco', as set out in the Fourth Schedule to the Rules, cannot be rectified for Cigarettes' alone as done by the Assistant Registrar, when there is no separate entry as Cigarettes' in Schedule 4 to the Rules. Therefore, according to the learned Counsel, the conclusion of the learned Judge is unassailable. The learned Counsel submitted that as between the Schedule and the Index, it is the Schedule which will prevail and the Index is only to find out under which clause of the Schedule the goods for which registration has been applied for, can be brought under, and nothing more. He also submitted that the applications for rectification ought not to have been entertained at the instance of the appellant in view of the finding given on his application rejecting Section 12(1) of the Act for independent registration. In other words, having allowed the decision under Section 12(1) to become final, it is not open to the appellant to reopen the same question in the Rectification Application. It is the contention of the learned Counsel for the respondent that on the earlier occasion, the authority, while rejecting the application of the appellant under Section 12(1) of the Act, are taken to view that 'cigarettes' manufactured by the respondent and the 'chewing tobacco' manufactured by the appellant, will come under the same category 'manufactured tobacco' and as such, answer the same description of goods brought to the application for rectification and a contrary conclusion now reached cannot be sustained and, therefore, the learned Judge rightly set aside the same. In support of this, he placed reliance on a judgment of the Mysore High Court in K.P. Chinnakrishna Setty v. Ambal and Co. A.I.R. 1973 Mys. 74 and another judgment of the Bombay High Court in J.L. Mehta v. Registrar of Trade Marks : AIR1962Bom82 . According to the learned Counsel, the entry '. v. Aven Rubber Corporation (1976) 1 P.L.R. 136. The learned Counsel went to the extent of contending that strictly speaking, once the conclusion that 'Cigarette' and 'Chewing Tobacco' are goods of the same description viz., 'manufactured tobacco' is reached, in the light of Section 12(1), the necessary consequence shall be that if a registration for any one of the items under 'manufactured tobacco is also as given, the above said two same trade mark shall not be given to the manufacture of the other item or items answering the same description. It that be so, he further argues that the question of confusion or deception will go to the background or the law will presume such a confusion or deception to reject the registration or rectification, as the case may be Learned Counsel submitted that the cases decided under passing off action cannot be relied on for the purposes of cases to be decided under this Act, in particular, relating to rectification or cancellation of registration. According to the learned Counsel, the test for passing off under Section 11(a) and Section 27 is confusion or possibility of confusion, whereas the test for infringement under Section 12(1) and under Section 29 (particularly with respect to Part-A, Registration) confusion or the possibility of confusion in the market is not relevant. What is relevant is, whether the proposed mark is identical or deceptively similar to the mark on the register.

12. Mr. U.N.R. Rao, in answering the criticism levelled against the stereo-typed affidavits, submitted that in the nature of things, it will be only like that, and if it is to be otherwise, that will be artificial. In support of this, he placed reliance on a judgment of this Court in Nestle's Products (India) v. P. Thankaraja : AIR1978Mad336 . As already pointed out, learned Counsel submitted that the cases decided under the old Act cannot be pressed into service in the light of important changes introduced in the new Act. For these reasons, according to the learned Counsel, the appeals are without merits and liable to be dismissed.

13. Before considering the rival submissions, it is necessary and useful to set out relevant provisions the Act and Rules.

14. Section 5 of the old Act (1940) reads as follows:

5.(1) A trade mark may be registered only in respect of particulargoods or classes of goods.

(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.

Sections 8, 12, 46, 56 of the new (1958) Act and Rules 22 and 26 of the 1959 Rules reads as follows:

8. Registration to be in respect of particular goods:

(1) A trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods.

(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.

12. Prohibition of registration of identified or deceptively similar trade marks.

(1) Save as provided in Sub-section (3), as no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.

(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.

(3) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or near resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit, to impose.

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 goods in respect of which it is registered an application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either-

(a) that the trade mark was registered without any bona fide intention, on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date of one month before the date of the application, or

(b) that up to a date of 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.

Provided that, except where the applicant has been permitted under Sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under Clause (a) or Clause (b) in relation to any goods if it is shown that there has been, before the relevant date or during the relevant period, as the case may be bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.

(2) Where in relation to any goods in respect of which a trade mark is registered-

(a) The circumstances referred to in Clause (b) of Sub-section (1) are shown to exist so far as regards non-user of the trade mark in relation to goods to be sold, or otherwise traded in, in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; and

(b) a person has been permitted under Sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted to register such a trade mark on application by that person in the prescribed manner to a High Court or to the Registrar, the tribunal may impose on the registration of the first mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.

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 and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates.

56. Power to cancel or vary registration and to rectify the register : (1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal 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 registcr of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) The Tribunal 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 tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them and 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.

(6) The power to rectify the register conferred by this section shall include the Part A of the register to Part B of the register.

Rule 22: Classification of goods : For the purposes of the registration of trade marks and of the rules, goods shall be classified in the manner specified in the Fourth Schedule.

Rule 26: Application to be confined to one class, etc. : (1) Every application for the registration of a trade mark shall be in respect of goods comprised in one class only of the Fourth Schedule.

(2) In the case of an application for registration in respect of all the goods included in a class or of a large variety of goods in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and-when it is registered.

(3) Applications for the registration of the same trade mark in different classes shall be treated as separate and distinct applications, and in all cases where a trade mark is registered under the same official number for goods in more than one class, whether on conversion of the specification under Rule 105 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the Act.

15. After a careful consideration of the rival submissions and on going through the citations given by the learned Counsel on both sides and after carefully perusing the judgment of the learned Judge, we find that there are authorities to support the rival submissions. But we consider that on the facts of the case, we have to decide the issue mainly placing reliance on the provisions of the Act and the Rules, and bearing in mind the precedents. It is an admitted fact that the respondent has been actually using the trade marks for one form of 'manufactured tobacco', namely, 'Cigarettes' right from the date of registration. Admittedly, again, the respondent's trade marks came under Class 34 of the Schedule 4 to the Rules. It is a fact that the respondent has not manufactured any article answering the description of 'Manufactured tobacco' other than 'Cigarettes'. Though a half-hearted attempt was made before the learned Judge that 'Cigarettes' will not answer the description of 'Manufactured tobacco', the same was not pressed before us in view of the concurrent finding given by the Registrar and the learned Judge. In this connection, it is necessary to look into Section 8 of the Act and also Rules 22 and 26. We have already extracted the said Section and the Rules. Section 8 specifically states. The registration of the trade mark can be in a prescribed class of goods'. 'Prescribed' means 'Prescribed under Rules'. Rule 22 slates: 'Things shall be classified in the manner specified in the Fourth schedule. A conjoint reading of Section 8(1) and Rules 22 and 26 of the Schedule 4 will clearly support the contention of the learned Counsel for the respondent which has been accepted by the learned Judge, that apart from classification as specified in the Schedule 4, no other classification is possible for the purposes of registration of trade mark. Pursuing further this line of reasoning, it is seen that no separate or independent item in the classification contained in the Fourth Schedule for 'Cigarette'. 'Cigarette' can only be brought under the Entry 'Manufactured Tobacco' under Class 34 of Schedule 4. Therefore, the learned Judge is right in his conclusion that: 'As 'Cigarettes' have not been specified as an article either in Class 34 or any other classes, there can be no separate registration in respect of 'Cigarettes'. This ground alone is sufficient for setting aside the order of the Registrar. As the respondent was aggrieved only by the rectification of the register confining/restricting the registration of his trade marks, to v Cigarettes' alone by the Assistant Registrar, the above conclusion was sufficient for the disposal of the appeal before the learned Judge. However, in view of the arguments advanced before him, the learned Judge has given further findings on the issues argued before him which necessitate us also to go into the further question argued before us.

16. As regards the contention of the learned Counsel for the appellant that there can be a separate registration for 'Cigarettes' on the basis of Index maintained by the Registrar of Trade Marks, we are of the view that the same cannot be accepted in view of the fact that the same (Index) is admittedly a non-statutory one, and in the light of the clear provisions of Section 8(1) and Rules 22 and 26. We have also arrived at the same conclusion while accepting the same view taken by the learned single Judge. The passages on which reliance was placed by the learned Counsel for the appellant, namely, the passages from Dr. Venkateswaran's Tradeand Merchandise Marks Act, 1958 will be of no avail as Section 5 of the Old Act corresponding to Section 8 of the new Act was' in different form as contended by the learned Counsel for the respondent. Section 8 of the Old Act did not contain the words 'Comprised in a prescribed class of goods'. Further, the passages as extracted above, do not in any way directly support the contention of the learned Counsel for the appellant. Those passages are for the purpose of old Section 5(2) corresponding to new Section 8(2) which is an enabling provision giving the Registrar the power to determine or to decide the question whenever arises as to the class within which any goods fall. We can broadly categorise the goods comprised in Schedule 4 to the Rules into two types, namely, particular goods and a general description of goods. For example.

Particular goods General description of goods

Wines (33) Non-alcoholic drinks (32)

Beer (32) Syrups and other preparations for making

beverages (32)

Honey (30) Gymnastic and sporting articles (28)

Salt (30) Ornaments and decoration for Christman

trees (28)

Pepper (30) Pharmaceutical substances (5)

Fish (29) Musical instruments (15)

Coffee (30) Furniture (20)

Tea (30) Cosmetics (3)

Cocco (30)

Sugar (30)

Rice (30)

(The numericals given in the brackets refer to the number of the Class as given in Schedule 4 to the Rules). If a person applies for registration of 'Cigarettes' as applied for by the respondent or for 'Chewing Tobacco' as applied for by the appellant, the Registration will be given under Class 34 for 'Manufactured tobacco', as those goods answer the description 'Manufactured tobacco'. In fact, as pointed out by the learned Judge, the appellant himself has sought the registration only under Class 34, namely, 'Manufactured Tobacco'. He did not apply for 'Quiwam' or 'Zarda'. We do not, therefore, think that we can accept the contention of the learned Counsel for the appellant that the order of the Assistant Registrar restricting the registration of the respondent's trade marks for 'Cigarettes' is in accordance with the provisions of the Act. Consequently, we are of the view that the order of the Assistant Registrar restricting the registration of respondent's trade marks for 'Cigarettes' is unsustainable in law.

17. The validity of the Order of the Assistant Registrar can be considered from another angle with reference to Sections 12 and 46 of the Act. We have already extracted these provisions. We have already noticed that the application filed by the appellant for registration of trade mark with similar name and device, namely, 'Charminar' was objected to by the respondent, and the objection was upheld by the Joint Registrar under Section 12(1) of the Act. We think that it will be useful to set out the order of the Joint Registrar itself. It reads thus:

Objection that the mark conflicted with certain registered trade marks, particularly Nos. 9951, 170427 Sinha says they are used in respect of cigarettes; that Quiwam and Zarda are goods of different description. It has been pointed out to him that they are in respect of J manufactured tobacco which takes in its ambit Quiwam and Zarda and therefore objection under Section 12(1) cannot be waived. Mr. Sinha offered to apply for rectification.

From the above Order, it is clear that between the parties, the issue whether 'Cigarettes' and 'Quiwam' and 'Zarda' will come under the same description of goods has been answered in the affirmative. No appeal was filed against that Order. Bearing this in mind, if we go to Section 46 of the Act, in particular the proviso, it will be clear that the applications for rectification were not maintainable. In other words, the authority concerned having given a finding that 'Cigarettes', 'Quiwam' and 'Zarda' will come under the same description of goods, and having noticed that 'Cigarettes' had already been registered under the head of 'Manufactured tobacco', at the instance of the respondent, the rectification applications for restricting the said trade mark for 'Cigarettes' cannot be entertained to enable the appellant to register the same trade mark for manufacture of 'Quiwam' and 'Zarda' which, admittedly, fall under the same description of goods. In this context only, the learned Counsel for the respondent placed reliance on the judgment in In re. Guttapercha of Rubber Manufacturing Co.'s Application (1909) 26 R.P.C. 428. Section 26 of the English Act corresponds to Section 46 of our Act. In that case, Buckly, L.J., observed as follows:

the alteration of the expression 'classes of goods' which occurred in the U.K. Act of 1883, to the expression description of goods' in the U.K. Act of 1883, was made designedly.

The learned Judge proceeded to say:

The purpose of it was this; that where the goods are not of the same class, but are of the same description, taking as an instance, goods made of India-rubber, then the intention of the Act of 1883 and that of 1905 is that there shall be a veto in respect as registering as identical trade mark or a similar trade mark in respect of good falling within the description, as distinguished from the class. Section 19 is perfectly capable of being read, and is, I think, to be read, as if it ran thus: No trade mark shall be registered in respect of any class of goods falling within a particular description of goods, when an identical or similar mark is already on the Register in respect of any goods falling within that description, it is true that a man cannot register for a description of goods, but he can register for a class of goods which fall within a particular description, and that is, I think, what Section 19 was aimed at.

18. Another case on which reliance was placed by the learned Counsel for the respondent is, 'Philips' Trade Mark 1969 R.P.C. 78. The relevant passage in that decision reads as follows:.Once it is established, as it is here, that the registered mark has been bona fide used by its proprietor in relation to goods within the classification for which it is registered, the Registrar is given a discretion by Section 26(1) to refuse an application for rectification of the register if he is able to hold that the goods upon which the mark has been so used, are goods of the same description as those within the classification but upon which the mark has not been actually used.

After a careful review of the relevant considerations, the hearing officer found it impossible to draw any real distinction within the broad specification of medical and pharmaceutical preparations such as would isolate products not of the same description.

Yet another case on which reliance was placed, is, Lever Brothers, v. Sunniwite Products 1966 R.P.C. 84 In that case, it was observed as follows:.The jurisdiction conferred by Section 26, however, is discretionary and it is conceded by the defendants that the particular ground of discretion indicated by the proviso to Sub-section (1) of the section is relevant to the present case assuming that the circumstances are such as to warrant its application. I am satisfied that there are no principles of trade mark law that would justify me in according to the defendants' claim that the Register should be rectified by removing the plaintiffs' mark in respect of substances for laundry use. There are only a few of such substances - e.g., starch, blue and the like and although on the hypothesis which I am now1 considering, soap is not one of them, it can, in my judgment, fairly be regarded, within the relevant authorities, as being 'goods of the same description'. Moreover, the plaintiffs' 'Sunlight' products have been for years advertised as, and became very widely known to the public as being, materials for inter alia laundry purposes. In these circumstances I do not propose to exercise the discretion which is vested in me by rectifying the Register so far as substances for laundry use are concerned.

We may point out that the learned single Judge placed reliance on the above judgment Lever Brothers v. Sunniwite Products 1966 R.P.C. 84. Therefore, we are of the view that in the light of proviso to Section 46(1) of the Act, and in the light of the decision rendered against the appellant under Section 12(1) of the Act, the applications for rectifications are not maintainable.

19. As against these citations relied on by the learned Counsel for the appellant, as already noticed, are mostly decided under the old Act and we have expressed our view that after the coming into force of the Act and in the light of the language employed in Section 8 of the Act in the place of old Section 5, those decisions may not be of much use to the appellant. Further, we agree with the reason given by the learned single Judge for distinguishing those decisions in the following manner:

Almost all the cases referred to above in which rectification had been ordered limiting the registration to the articles for which trade mark has been used related to cases or registration for a class of articles but the use of the mark had been only to one of the articles in that class. These decisions may not therefore apply to the case on hand where the registration was for an article in a class and not for a class of articles.

Therefore, we do not propose to deal with those cases in detail.

20. So far as the contention based on non-user is concerned, we are of the view that the learned Judge, in more than one place, has overruled the same by stating that as the manufacture of 'Cigarettes' comes under 'Manufactured tobacco', it cannot be contended that the respondent's trade marks should be removed or restricted on the ground of non-use. We also agree with the following observations of the learned Judge:

It is also equally well established that if a trade mark has been registered under the general heading 'Manufactured tobacco', referred to in class 34, the registered proprietor cannot be compelled to produce or deal with all goods falling under that category on pain of losing his

trade mark for non-use.

** ** **

But as already stated, so long as separate classification has not been made in respect of the above items which are merely to be forms of 'Manufactured Tobacco', the registration of the appellant's trade mark in respect of 'Manufactured tobacco' cannot be said to be bad.

For all these reasons, we are of the view that the appellant has not made out a case for reversing the judgment of the learned single Judge. Consequently we dismiss the appeals. However, there will be no order as to costs.

Subject	Intellectual Property Rights
Court	Chennai High Court
Decided On	Oct-11-1990
Reported in	(1991)194MLJ1
Appellant	Vishnudas Trading as Vishnudas Kishindas Zarda Factory
Respondent	The Vazir Sultan Tobacco Company Limited
Cases Referred	Lever Brothers v. Sunniwite Products

Vishnudas Trading as Vishnudas Kishindas Zarda Factory Vs. the Vazir Sultan Tobacco Company Limited - Court Judgment