supreme court judgment on use of religious books as trade mark

7/24/2019 Supreme Court Judgment on use of Religious Books as Trade Mark

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REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NO. 2138 OF 2006

Lal Babu Priyadarshi .... Appellant(s)

Versus

Amritpal Singh .... Respondent(s)

J U D G M E N T

R.K. Agr!"# J.

1) The present appeal has been filed against the order dated

1.1.!" passed by the #ntelle$tual Property Appellate Board (in

short %the Board&) in 'riginal Appeal o. "*!+*T,*-'L hereby

the Board alloed the appeal filed by the respondent herein hile

setting aside the order dated 1..!+ passed by the Assistant

Registrar of Trade ,ar/s.

!) Br$%& &'()*

(a) 'ne Shri Lal Babu Priyadarshi0the appellant herein trading as

,*s 'm Perfumery Ba/ergan2 3aldali Road Patna made an

appli$ation to the Registrar of Trade ,ar/s to register a trade mar/ by

name 4RA,A5A6 ith the de7i$e of $ron in $lass in respe$t of

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in$ense sti$/s (agarbattis dhoops) and perfumeries et$.

(b) 'ne Shri Amritpal Singh0the respondent herein as a dealer for

the sale of the produ$ts of the appellant herein and as also trading

as ,*s Badshah #ndustries 8hit/ohra Pun2abi 8olony Patna. The

respondent herein filed a oti$e of 'pposition to oppose the

registration of aforesaid trade mar/ under Se$tions 9 11(a) 11(b)

11(e) 1!(1) 1!() and 1:(1) of the Trade and ,er$handise ,ar/s A$t

19": ;repealed by the Trade ,ar/s A$t 1999 (+< of 1999)0in short

%the A$t&= $laiming that the impugned mar/ being the name of a

religious boo/ $annot be$ome the sub2e$t matter of monopoly for an

indi7idual.

($) The Assistant Registrar of Trade ,ar/s after holding that the

impugned trade mar/ $onsists of de7i$e of $ron and the ord

4RA,A5A6 is $apable of distinguishing the goods and is not in$luded

in the list of mar/s not registrable under the A$t by order dated

1..!+ dismissed the appli$ation filed by the respondent herein.

(d) Being aggrie7ed by the order dated 1..!+ the respondent

herein preferred an appeal before the Board being 'riginal Appeal o.

"*!+*T,*-'L. The Board by order dated 1.1.!" set aside

the order dated 1..!+ passed by the Assistant Registrar of

Trade ,ar/s.

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(e) Aggrie7ed by the order dated 1.1.!" the appellant has filed

this appeal by ay of spe$ial lea7e.

) >eard ,s. Anuradha Salhotra learned $ounsel for the appellant

and ,r. Sudhir 8handra learned senior $ounsel for the respondent.

+) The sole ?uestion for $onsideration before this 8ourt is hether

the registration of the ord 4RA,A5A6 as a trade mar/ being the

name of a >oly Boo/ of >indus is prohibited under Se$tion 9(!) of the

Trade ,ar/s A$t 1999@

R$+" ),-$))$/)*

") Learned $ounsel for the appellant submitted that the appellant

as in the business of manufa$turing trading and mar/eting of

in$ense sti$/s sin$e 19:1 and the respondent herein as a dealer of

the appellant herein. The goods under the trade mar/ 4RA,A5A6

ha7e been ad7ertised by him through 7arious means in$luding the

publi$ation of $autionary noti$es in nespapers. Learned $ounsel

further submitted that through etensi7e use ide ad7ertisement and

the e$ellent ?uality of the produ$ts the trademar/ 4RA,A5A6 and

the $arton in hi$h the produ$ts are sold has be$ome distin$ti7e in

su$h a manner that use of the same or similar trademar/ or $arton

by any other person ill $ause $onfusion and de$eption in the trade

and amongst the publi$. The sale as done through a netor/ of

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dealers and distributors and the respondent herein as a dealer of

the appellant herein. Learned $ounsel submitted that after the

termination of dealership the respondent herein started selling

in$ense sti$/s under the trade mar/ 4RA,A5A6 ritten in the same

style and manner.

) Learned $ounsel further $ontended that the mere fa$t that the

trade mar/ being the name of a religious boo/ $annot be a suffi$ient

ground for refusal of registration under Se$tion 9(!) of the A$t and is

not based on e7iden$e on re$ord that the feelings of any se$tion of the

>indus ha7ing been hurt by its use in relation to in$ense sti$/s. She

further submitted that the Assistant Registrar of Trade ,ar/s rightly

held that the impugned trade mar/ $onsists of de7i$e of $ron and

the ord is $apable of distinguishing the goods of the appellant herein

and the trade mar/ is not in$luded in the list of mar/s not registrable

under the A$t. She further $laimed that it has already been pro7ed

before the 8ourt of Assistant Registrar that the appellant as using

the trade mar/ sin$e 19:1 and hen$e is the prior user in $omparison

to the respondent. A$$ording to the learned $ounsel the Board

totally mis$onstrued the obser7ations of the Standing 8ommittee in

the Cighth Report on the Trade ,ar/s Bill 199. Relying upon

8lause 1. of the said report it as submitted that e7en though the

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8ommittee had obser7ed that 4any symbol relating to religious gods

goddesses pla$es of orship should not ordinarily be registered as a

trade mar/6 it spe$ifi$ally refrained from prohibiting registration of

su$h mar/s. #t as further submitted that the Board has erroneously

relied upon the de$ision of this 8ourt in Registrar of Trade Marks

7s. Ashok Chandra RakhitA#R 19"" S8 "": by pro$eeding on the

basis that the said $ase as an authority on the ?uestion that all

religious names or symbols are prohibited from being registered

hereas the fa$t of the matter is that this 8ourt had merely upheld

the $on$urrent findings of the Registrar and the >igh 8ourt that the

ord %S>RCC& as in$apable of distinguishing the goods of any one

trader. The said $ase is also distinguishable by the fa$t that it as

the in7ariable pra$ti$e of the trade mar/ offi$e not to register the ord

%S>RCC& but this is not so ith the ord 4RA,A5A6.


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the names of >indu deities as trade mar/ is a $ommon pra$ti$e and

no one has $omplained about the same being sensiti7e to >indu

religious sentiments for hi$h relian$e as pla$ed on a de$ision of

this 8ourt in K.R. Chinna Krishna Chettiar 7s. ri Ambal ! Co.

A#R 19e further $ontended

that the mar/ 4RA,A5A6 is not a distin$ti7e mar/ and is de7oid of

any distin$ti7e $hara$ter. The mar/ is not $apable of distinguishing

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the goods of one person from those of another. #t as also $ontended

that the mar/ 4RA,A5A6 is not registrable sin$e it is the name of a

famous and ell /non religious boo/. #t as also $laimed that more

than ! traders in Patna and many more are using the trade mar/

and thus it has be$ome publi$juris. #n support of the same learned

senior $ounsel pla$ed relian$e upon a de$ision of this 8ourt in

$ational %ell Co. 7s. Metal Goods Mfg. Co. &P' Ltd. and Another

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D$)',))$/*

1!) The appellant herein filed an appli$ation dated !".:.199+

being o. :e $laimed the use of the trade mar/ 4BA3S>A>

RA,A5A6 prior to the appellant herein. The respondent herein put

forth an ob2e$tion that the impugned mar/ being name of a religious

boo/ $annot be$ome the sub2e$t matter of monopoly for an

indi7idual. >e further added that his appli$ation for the registration

of the same trade mar/ $laiming user sin$e ".11.19: is pending for

registration. The appli$ation as further opposed ith the reasoning

that it $arries a large sentimental 7alue for the people and therefore

no one $an $laim sole right to the use of su$h a ord. #t as also

admitted by the respondent herein that more than ! traders in

Patna are using the trade mar/ 4RA,A5A6. Einally it as

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submitted that the impugned mar/ is identi$al ith the respondent&s

mar/ 4BA3S>A> RA,A5A6 hi$h is pending registration and the

impugned registration ill $ause $onfusion among general publi$.

Though the Assistant Registrar of Trade ,ar/s dismissed the

appli$ation filed by the respondent herein the Board set aside the

said order after holding that the trade mar/ 4RA,A5A6 is not

distin$ti7e of the goods of the appellant as it is being used as a mar/

for the same produ$ts by more than ! traders in Patna and in

different parts of the $ountry and has be$ome publi$ juris and

$ommon to the trade.

1) #n 7ie of the abo7e it is rele7ant to mention Se$tion 9 of the A$t

hi$h reads as underF0

. A-)/",(% gr/,) &/r r%&,)" /& r%g$)(r($/ G (1) The trademar/s G

(a) hi$h are de7oid of any distin$ti7e $hara$ter that is to saynot $apable of distinguishing the goods or ser7i$es of oneperson from those of another personH

(b) hi$h $onsist e$lusi7ely of mar/s or indi$ations hi$h mayser7e in trade to designate the /ind ?uality ?uantity intendedpurpose 7alues geographi$al origin or the time of produ$tionof the goods or rendering of the ser7i$e or other $hara$teristi$sof the goods or ser7i$eH

($) hi$h $onsist e$lusi7ely of mar/s or indi$ations hi$hha7e be$ome $ustomary in the $urrent language or in the bonafide and established pra$ti$es of the trade

shall not be registeredF

Pro7ided that a trade mar/ shall not be refused registration if beforethe date of appli$ation for registration it has a$?uired a distin$ti7e

$hara$ter as a result of the use made of it or is a ell0/non trade

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mar/.

(!) A mar/ shall not be registered as a trade mar/ if G

(a) it is of su$h nature as to de$ei7e the publi$ or $ause$onfusionH

(b) it $ontains or $omprises of any matter li/ely to hurt thereligious sus$eptibilities of any $lass or se$tion of the $itiIensof #ndiaH

($) it $omprises or $ontains s$andalous or obs$ene matterH

(d) its use is prohibited under the Cmblems and ames(Pre7ention of #mproper Jse) A$t 19" (1! of 19").

() A mar/ shall not be registered as a trade mar/ if it $onsistse$lusi7ely of G

(a) the shape of goods hi$h results from the nature of thegoods themsel7esH or

(b) the shape of goods hi$h is ne$essary to obtain a te$hni$alresultH or

($) the shape hi$h gi7es substantial 7alue to the goods.

Explanation. Eor the purposes of this se$tion the nature of goods orser7i$es in relation to hi$h the trade mar/ is used or proposed to beused shall not be a ground for refusal of registration.6

This se$tion stipulates that the trade mar/s hi$h are de7oid of any

distin$ti7e $hara$ter or hi$h $onsist e$lusi7ely of mar/s or

indi$ations hi$h may ser7e in trade to designate the /ind ?uality

?uantity intended purpose 7alues geographi$al origin or the time of

produ$tion of goods or rendering of the ser7i$es or other

$hara$teristi$s of the goods or ser7i$e or hi$h $onsist e$lusi7ely of

mar/s or indi$ations hi$h ha7e be$ome $ustomary in the $urrent

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language or in the bona fide and established pra$ti$e of the trade

shall not be registered unless it is shon that the mar/ has in fa$t

a$?uired a distin$ti7e $hara$ter as a result of use before the date of

appli$ation. #t also pro7ides that a mar/ shall not be registered as

trade mar/s if (i) it de$ei7es the publi$ or $auses $onfusion (ii) it

$ontains or $omprises of any matter li/ely to hurt the religious

sus$eptibilities (iii) it $ontains s$andalous or obs$ene matter (i7) its

use is prohibited. #t further pro7ides that if a mar/ $onsists

e$lusi7ely of (a) the shape of goods hi$h form the nature of goods

themsel7es or (b) the shape of goods hi$h is ne$essary to obtain a

te$hni$al result or ($) the shape hi$h gi7es substantial 7alue of the

goods then it shall not be registered as trade mar/.

1+) Erom 8lause 1. of the Cighth Report on the Trade ,ar/s Bill

199 submitted by the Parliamentary Standing 8ommittee e find

that the 8ommittee epressed its opinion that any symbol relating to

Kods Koddesses pla$es of orship should not ordinarily be

registered as a trade mar/. >oe7er the 8ommittee did not ant to

disturb the eisting trade mar/s by prohibiting their registration as it

ill result in a $haos in the mar/et. At the same time the 8ommittee

trusted that Ko7ernment ill initiate appropriate a$tion if someone

$omplaints that a parti$ular trade mar/ is hurting his religious

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sus$eptibilities. This report as presented on !1.+.199+. Dhen the

report as presented the appellant&s trade mar/ had not been

registered and the appli$ation filed by the respondent herein opposing

its registration as dismissed only on 1..!+ by the Assistant

Registrar of Trade ,ar/s.

1") The ord 4RA,A5A6 represents the title of a boo/ ritten by

,aharishi Valmi/i and is $onsidered to be a religious boo/ of the

>indus in our $ountry. Thus using e$lusi7e name of the boo/

4RA,A5A6 for getting it registered as a trade mar/ for any

$ommodity $ould not be permissible under the A$t. #f any other ord

is added as suffi or prefi to the ord 4RA,A5A6 and the alphabets

or design or length of the ords are same as of the ord 4RA,A5A6

then the ord 4RA,A5A6 may lose its signifi$an$e as a religious

boo/ and it may be $onsidered for registration as a trade mar/.

>oe7er in the present $ase e find that the appellant had applied

for registration of the ord 4RA,A5A6 as a trade mar/. De also find

that in the photographs after adding 4',&s6 to the ord 4RA,A5A6

at the top and in beteen 4',&s and RA,A5A6 the senten$e 4Three

Top 8lass Aromati$ Eragran$e6 is also ritten. Thus it is not a $ase

that the appellant is see/ing the registration of the ord 4',&s

RA,A5A6 as a trade mar/. Eurther from the photographs e find

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that the photographs of Lord Rama Sita and La/shman are also

shon in the label hi$h is a $lear indi$ation that the appellant is

ta/ing ad7antage of the Kods and Koddesses hi$h is otherise not

permitted.

1) In $ational %ell Co. &supra' this 8ourt has held that the

distin$ti7eness of the trade mar/ in relation to the goods of a

registered proprietor of su$h a trade mar/ may be lost in a 7ariety of

ays e.g. by the goods not being $apable of being distinguished as the

goods of su$h a proprietor or by etensi7e pira$y so that the mar/s

be$ome publi$juris. The prin$iple underlying $lause (c) of Se$tion !

is that the property in a trade mar/ eists so long as it $ontinues to

be distin$ti7e of the goods of the registered proprietor in the eyes of

the publi$ or a se$tion of the publi$. #f the proprietor is not in a

position to use the mar/ to distinguish his goods from those of others

or has abandoned it or the mar/ has be$ome so $ommon in the

mar/et that it has $eased to $onne$t him ith his goods there ould

hardly be any 2ustifi$ation in retaining it on the register.

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C/'",)$/*

1:) There are many holy and religious boo/s li/e uran Bible Kuru

Kranth Sahib Ramayan et$. to name a fe. The anser to the

?uestion as to hether any person $an $laim the name of a holy or

religious boo/ as a trade mar/ for his goods or ser7i$es mar/eted by

him is $learly %'&.

19) ,oreo7er the appellant has not been able to establish that the

ord 4RA,A5A6 for hi$h he has applied the trade mar/ had

a$?uired a reputation of user in the mar/et inasmu$h as e find that

there are more than ! traders in the $ity using the ord 4RA,A5A6

as a mar/ for the similar produ$ts and also in different parts of the

$ountry.

!) 'n a perusal of the artisti$ or/ said to ha7e been $reated there

is no doubt that both the mar/s are identi$al in design $olour

s$heme and the reprodu$tion of photographs is in su$h a manner

that an ordinary buyer ould reasonably $ome to a mista/en

$on$lusion that the arti$le $o7ered by one brand $an be the arti$le

$o7ered by the other. Both the parties ha7e $laimed to be

manufa$turing units engaged in $ertain goods.

!1) Eurther the respondent herein $laimed that though he had been

in the business sin$e 19: he had de7eloped and published the

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artisti$ or/ in 19: and has also been using the mar/ as a

trademar/ and $laiming use sin$e 19: hereas the appellant herein

$laimed use of the trademar/ sin$e 19:oe7er by filing an

appli$ation to the $on$erned authority the appellant has $laimed the

use sin$e 19:1. Eurther in 7arious pleadings in the Title Suits filed

by the respondent herein the appellant herein has admitted the use

and publi$ation of the artisti$ mar/ of the respondent before the date

of $laim of the first use by the appellant that is 19:


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ITEM NO.1A COURT NO.14 SECTION XVI(For Judgment) S U P R E M E C O U R T O F I N I A RECOR OF PROCEEIN!S

C"#"$ A%%e&$ No('). 1*+,,-

A /A/U PRI0AARSI A%%e$$&nt(')

VERSUS

AMRITPA SIN! Re'%ondent(')

&te 2 3+1,+,1 T5"' &%%e&$ 6&' 7&$$ed on 8or %ronoun7ement o89udgment tod&:.

For A%%e$$&nt(') Mr. ;. V. Mo5&n< AOR

For Re'%ondent(') Mr. So5&n S"ng5 R&n&< Ad#.Mr'. /"ndr& R&n&< Ad#.

For M+' S. S. R&n& = Co.

on>?$e Mr. Ju't"7e R.;. Agr&6&$ %ronoun7ed t5e re%ort&?$e

9udgment o8 t5e /en75 7om%r"'"ng on>?$e Mr. Ju't"7e R&n9&n !ogo"

&nd "' ord'5"%.

T5e &%%e&$ "' d"'m"''ed "n term' o8 t5e '"gned re%ort&?$e

9udgment.

(R.NATARAJAN) (SNE ATA SARMA)Court M&'ter Court M&'ter

(S"gned re%ort&?$e 9udgment "' %$&7ed on t5e 8"$e)

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supreme court judgment on use of religious books as trade mark

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