Case Note & Summary
The dispute concerned the use of the trade mark 'Charminar' in relation to tobacco products. The respondent company, a cigarette manufacturer, had obtained registrations in 1942 and 1955 under the then trade mark legislation for the mark 'Charminar' in respect of 'manufactured tobacco' falling in Class 34 of the Fourth Schedule to the Trade Marks Rules. Despite the broad specification, the respondent company manufactured only cigarettes and had never produced any other tobacco article. The appellant, who had been manufacturing quiwam and zarda since 1973, used the same word 'Charminar' on its products but with a different device. When the appellant applied for registration of its trade mark for quiwam and zarda under the Trade and Merchandise Marks Act, 1958, the Joint Registrar of Trade Marks declined the application under Section 12(1), observing that the respondent's existing registrations for 'manufactured tobacco' encompassed quiwam and zarda. Consequently, the appellant filed rectification applications under Section 46 read with Section 56 before the Registrar of Trade Marks, seeking to restrict the respondent's specification of goods to 'cigarettes' only, primarily on the ground of non-user in respect of quiwam and zarda. The Assistant Registrar allowed the rectification on 31 August 1976 and directed that the entries for registration numbers 9951 and 170427 be amended to read 'cigarettes'. The respondent company then preferred statutory appeals under Section 109(2) to the Madras High Court. A Single Judge allowed the appeals by judgment dated 11 September 1980, holding that the Assistant Registrar had impermissibly sub-classified 'manufactured tobacco', that user of the trade mark was not necessary to sustain registration for the broader description, and that rectification would enable the appellant to pass off its goods as those of the respondent. The appellant's further appeals under Section 109(5) were dismissed by a Division Bench of the Madras High Court on 11 October 1990. The Division Bench held that there could be no separate registration for cigarettes because Class 34 spoke only of 'manufactured tobacco'; that the Joint Registrar's order under Section 12 was conclusive in the absence of rectification; and that manufacture of cigarettes came within 'manufactured tobacco', so the mark could not be removed or restricted on the ground of non-use with reference to quiwam and zarda. The appellant then approached the Supreme Court. The appellant contended that 'manufactured tobacco' was a genus comprising distinct species such as cigarettes, quiwam, zarda, and snuff, each with different descriptions and modes of consumption. Registration for a broad class without specifying particular goods was fundamentally erroneous and caused irreparable prejudice by excluding the entire trading community from obtaining marks for different species. The appellant also pointed out that 'Charminar' was not an invented word and the respondent's registration was not defensive, and that the respondent had no bona fide intention to use the mark for any product other than cigarettes. The respondent relied on its registered marks covering the entire class and the reasoning of the High Court. The Supreme Court heard arguments on the interpretation of Sections 12(1), 46, 56, 109(2), and 109(5) of the Trade and Merchandise Marks Act, 1958 and the corresponding provisions of the earlier Act. The final decision of the Supreme Court is not provided in the available judgment text.
Headnote
A) Trade Marks - Rectification of Register - Section 46 read with Section 56, Trade and Merchandise Marks Act, 1958 - Non-user of goods in same class - Appellant sought rectification of respondent's trademark registrations for 'manufactured tobacco' to limit to cigarettes because respondent only manufactured cigarettes and never made quiwam or zarda - Assistant Registrar allowed rectification, but Single Judge set aside holding sub-classification impermissible and that registration for broad class can be maintained without user of every article - Division Bench affirmed, holding rectification not maintainable absent registered trade mark restriction - Held that respondent's mark could not be removed on ground of non-use for quiwam and zarda since cigarettes fall under manufactured tobacco. B) Trade Marks - Scope of Registration in a Class - Trade and Merchandise Marks Act, 1958, Section 12(1) - Registration for 'manufactured tobacco' covers all species within Class 34 including cigarettes, quiwam, zarda, snuff etc. - Joint Registrar declined appellant's application under Section 12(1) because respondent's registration for manufactured tobacco covered quiwam and zarda - High Court held no separate registration for cigarettes permissible as Class 34 speaks only of 'manufactured tobacco' - Held that manufacture of cigarettes comes under manufactured tobacco and trade mark cannot be restricted by sub-classification. C) Trade Marks - Defensive Registration and Invented Word - Trade Marks Act, 1940, Section 38 (corresponding to Section 48 of Trade and Merchandise Marks Act, 1958) - Appellant contended 'Charminar' is not an invented word and respondent's registration was not defensive, so broad registration for entire class without bona fide intention to use all goods is unjust - The word is name of a well-known monument in Hyderabad, not susceptible to proprietary claim - This argument was raised to support rectification. D) Trade Marks - Preclusion of Third Party Registration - Trade and Merchandise Marks Act, 1958 - Registration for broad class cannot preclude others from obtaining registration for different species of goods within same class where no bona fide intention to use - Appellant argued such preemption is unjust and against trade mark principles - The lower courts did not accept this as sufficient to order rectification.
Issue of Consideration
Whether a registered trade mark for 'manufactured tobacco' can be rectified to limit it to cigarettes when the proprietor has used the mark only for cigarettes; whether sub-classification within a class is permissible; whether non-user of specific goods within the same class justifies rectification.
Law Points
- Trade mark registration for 'manufactured tobacco' covers all goods in Class 34
- non-user of specific goods within class does not justify rectification under Sections 46 and 56
- sub-classification of 'manufactured tobacco' not permissible
- 'cigarettes' falls within 'manufactured tobacco'
- registration under Section 12(1) is conclusive absent rectification
- 'Charminar' is not an invented word and not a defensive registration under Section 38 of Trade Marks Act
- 1940.
