Granth Sahib, Ramayan etc., to name a few. The answer to the
question as to whether any person can claim the name of a holy or
religious book as a trade mark for his goods or services marketed by
him is clearly ‘NO’.
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)
Dated;OCTOBER 27, 2015.
1) The present appeal has been filed against the order dated
10.01.2005 passed by the Intellectual Property Appellate Board (in
short ‘the Board’) in Original Appeal No. 35/2004/TM/KOL whereby
the Board allowed the appeal filed by the respondent herein while
setting aside the order dated 31.03.2004 passed by the Assistant
Registrar of Trade Marks.
2) Brief facts:
(a) One Shri Lal Babu Priyadarshi-the appellant herein, trading as
M/s Om Perfumery, Bakerganj, Daldali Road, Patna made an
application to the Registrar of Trade Marks to register a trade mark by
name “RAMAYAN” with the device of crown in class 3 in respect of
incense sticks (agarbattis, dhoops) and perfumeries etc.
(b) One Shri Amritpal Singh-the respondent herein, was a dealer for
the sale of the products of the appellant herein and was also trading
as M/s Badshah Industries, Chitkohra, Punjabi Colony, Patna. The
respondent herein filed a Notice of Opposition to oppose the
registration of aforesaid trade mark under Sections 9, 11(a), 11(b),
11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act,
1958 [repealed by the Trade Marks Act, 1999 (47 of 1999)-in short
‘the Act’] claiming that the impugned mark, being the name of a
religious book, cannot become the subject matter of monopoly for an
individual.
(c) The Assistant Registrar of Trade Marks, after holding that the
impugned trade mark consists of device of crown and the word
“RAMAYAN” is capable of distinguishing the goods and is not included
in the list of marks not registrable under the Act, by order dated
31.03.2004, dismissed the application filed by the respondent herein.
(d) Being aggrieved by the order dated 31.03.2004, the respondent
herein preferred an appeal before the Board being Original Appeal No.
35/2004/TM/KOL. The Board, by order dated 10.01.2005, set aside
the order dated 31.03.2004, passed by the Assistant Registrar of
Trade Marks.
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(e) Aggrieved by the order dated 10.01.2005, the appellant has filed
this appeal by way of special leave.
3) Heard Ms. Anuradha Salhotra, learned counsel for the appellant
and Mr. Sudhir Chandra, learned senior counsel for the respondent.
4) The sole question for consideration before this Court is whether
the registration of the word “RAMAYAN” as a trade mark, being the
name of a Holy Book of Hindus, is prohibited under Section 9(2) of the
Trade Marks Act, 1999?
Rival submissions:
5) Learned counsel for the appellant submitted that the appellant
was in the business of manufacturing, trading and marketing of
incense sticks since 1981 and the respondent herein was a dealer of
the appellant herein. The goods under the trade mark “RAMAYAN”
have been advertised by him through various means including the
publication of cautionary notices in newspapers. Learned counsel
further submitted that through extensive use, wide advertisement and
the excellent quality of the products, the trademark “RAMAYAN” and
the carton in which the products are sold has become distinctive in
such a manner that use of the same or similar trademark or carton
by any other person will cause confusion and deception in the trade
and amongst the public. The sale was done through a network of
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dealers and distributors and the respondent herein was a dealer of
the appellant herein. Learned counsel submitted that after the
termination of dealership, the respondent herein started selling
incense sticks under the trade mark “RAMAYAN” written in the same
style and manner.
6) Learned counsel further contended that the mere fact that the
trade mark, being the name of a religious book, cannot be a sufficient
ground for refusal of registration under Section 9(2) of the Act and is
not based on evidence on record that the feelings of any section of the
Hindus having been hurt by its use in relation to incense sticks. She
further submitted that the Assistant Registrar of Trade Marks rightly
held that the impugned trade mark consists of device of crown and
the word is capable of distinguishing the goods of the appellant herein
and the trade mark is not included in the list of marks not registrable
under the Act. She further claimed that it has already been proved
before the Court of Assistant Registrar that the appellant was using
the trade mark since 1981 and hence, is the prior user in comparison
to the respondent. According to the learned counsel, the Board,
totally misconstrued the observations of the Standing Committee in
the Eighth Report on the Trade Marks Bill, 1993. Relying upon
Clause 13.3 of the said report, it was submitted that even though the
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Committee had observed that “any symbol relating to religious gods,
goddesses, places of worship should not ordinarily be registered as a
trade mark”, it specifically refrained from prohibiting registration of
such marks. It was further submitted that the Board has erroneously
relied upon the decision of this Court in Registrar of Trade Marks
vs. Ashok Chandra Rakhit AIR 1955 SC 558 by proceeding on the
basis that the said case was an authority on the question that all
religious names or symbols are prohibited from being registered
whereas the fact of the matter is that this Court had merely upheld
the concurrent findings of the Registrar and the High Court that the
word ‘SHREE’ was incapable of distinguishing the goods of any one
trader. The said case is also distinguishable by the fact that it was
the invariable practice of the trade mark office not to register the word
‘SHREE’ but this is not so with the word “RAMAYAN”.
7) Relying upon a decision of this Court in Mumbai International
Airport Private Limited vs. Golden Chariot Airport and Another
(2010) 10 SCC 422, it is further submitted that the respondent herein
had himself claimed the use of the identical mark and therefore, it did
not lie in his mouth to object to the registration of the word in the
name of the appellant. She further contended that the Board ought to
have seen that there are several cases which indicate that the use of
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the names of Hindu deities as trade mark is a common practice and
no one has complained about the same being sensitive to Hindu
religious sentiments for which reliance was placed on a decision of
this Court in K.R. Chinna Krishna Chettiar vs. Sri Ambal & Co.
AIR 1970 SC 146.
8) Learned counsel also placed reliance on Corn Products
Refining Co. vs. Shangrila Food Products Ltd. 1960 (1) SCR 968 in
support of the submission that before the applicant can seek to derive
assistance for the success of his application from the presence of a
number of marks having one or more common features which occur
in his mark also, he has to prove that those marks had acquired a
reputation by user in the market.
9) Learned counsel finally contended that the Board erred in law
while setting aside the judgment of the Assistant Registrar of Trade
Marks while holding adversely about its distinctiveness, the mark
causing deception and not having been used in an honest manner.
10) Learned senior counsel for the respondent contended that the
impugned mark, being name of a religious book, cannot become the
subject matter of monopoly for an individual. He further contended
that the mark “RAMAYAN” is not a distinctive mark and is devoid of
any distinctive character. The mark is not capable of distinguishing
6Page 7
the goods of one person from those of another. It was also contended
that the mark “RAMAYAN” is not registrable since it is the name of a
famous and well known religious book. It was also claimed that more
than 20 traders in Patna and many more are using the trade mark
and thus it has become public juris. In support of the same, learned
senior counsel placed reliance upon a decision of this Court in
National Bell Co. vs. Metal Goods Mfg. Co. (P) Ltd. and Another
1970 (3) SCC 665. He further submitted that the impugned mark is
identical with the respondent’s mark “BADSHAH RAMAYAN” which is
pending registration and the impugned registration will cause
harassment to other traders and purchasing public would be bound
to be confused and deceived. Learned senior counsel finally claimed
that the Board was right in setting aside the order dated 31.03.2004
passed by the Assistant Registrar of Trade Marks.
11) We have carefully gone through the relevant documents and
perused the material on record.
7Page 8
Discussion:
12) The appellant herein filed an application dated 25.08.1994
being No. 638073-B in class 3 for registration of a trade mark
consisting of the word “RAMAYAN” with the device of crown in respect
of incense sticks (agarbatties) and perfumeries etc. The appellant
herein claimed the user since 01.01.1987. He further filed a request
to rectify the user from 01.01.1981 which was allowed by the
Assistant Registrar of Trade Marks. While opposing the application in
class 3 for registration of the trade mark, the respondent herein filed
a notice of opposition under Sections 9, 11(a), 11(b), 11(e), 12(1) and
18(1) of the Act. He claimed the use of the trade mark “BADSHAH
RAMAYAN” prior to the appellant herein. The respondent herein put
forth an objection that the impugned mark, being name of a religious
book, cannot become the subject matter of monopoly for an
individual. He further added that his application for the registration
of the same trade mark claiming user since 05.11.1986 is pending for
registration. The application was further opposed with the reasoning
that it carries a large sentimental value for the people and therefore,
no one can claim sole right to the use of such a word. It was also
admitted by the respondent herein that more than 20 traders in
Patna are using the trade mark “RAMAYAN”. Finally, it was
8Page 9
submitted that the impugned mark is identical with the respondent’s
mark “BADSHAH RAMAYAN” which is pending registration and the
impugned registration will cause confusion among general public.
Though the Assistant Registrar of Trade Marks dismissed the
application filed by the respondent herein, the Board set aside the
said order after holding that the trade mark “RAMAYAN” is not
distinctive of the goods of the appellant as it is being used as a mark
for the same products by more than 20 traders in Patna and in
different parts of the country and has become public juris and
common to the trade.
13) In view of the above, it is relevant to mention Section 9 of the Act
which reads as under:-
“9. Absolute grounds for refusal of registration – (1) The trade
marks –
(a) which are devoid of any distinctive character, that is to say,
not capable of distinguishing the goods or services of one
person from those of another person;
(b) which consist exclusively of marks or indications which may
serve in trade to designate the kind, quality, quantity, intended
purpose, values, geographical origin or the time of production
of the goods or rendering of the service or other characteristics
of the goods or service;
(c) which consist exclusively of marks or indications which
have become customary in the current language or in the bona
fide and established practices of the trade,
shall not be registered:
Provided that a trade mark shall not be refused registration if before
the date of application for registration it has acquired a distinctive
character as a result of the use made of it or is a well-known trade
9Page 10
mark.
(2) A mark shall not be registered as a trade mark if –
(a) it is of such nature as to deceive the public or cause
confusion;
(b) it contains or comprises of any matter likely to hurt the
religious susceptibilities of any class or section of the citizens
of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names
(Prevention of Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists
exclusively of –
(a) the shape of goods which results from the nature of the
goods themselves; or
(b) the shape of goods which is necessary to obtain a technical
result; or
(c) the shape which gives substantial value to the goods.
Explanation. – For the purposes of this section, the nature of goods or
services in relation to which the trade mark is used or proposed to be
used shall not be a ground for refusal of registration.”
This section stipulates that the trade marks which are devoid of any
distinctive character or which consist exclusively of marks or
indications which may serve in trade to designate the kind, quality,
quantity, intended purpose, values, geographical origin or the time of
production of goods or rendering of the services or other
characteristics of the goods or service or which consist exclusively of
marks or indications which have become customary in the current
10Page 11
language or in the bona fide and established practice of the trade
shall not be registered, unless it is shown that the mark has in fact
acquired a distinctive character as a result of use before the date of
application. It also provides that a mark shall not be registered as
trade marks if (i) it deceives the public or causes confusion, (ii) it
contains or comprises of any matter likely to hurt the religious
susceptibilities, (iii) it contains scandalous or obscene matter, (iv) its
use is prohibited. It further provides that if a mark consists
exclusively of (a) the shape of goods which form the nature of goods
themselves, or (b) the shape of goods which is necessary to obtain a
technical result, or (c) the shape which gives substantial value of the
goods then it shall not be registered as trade mark.
14) From Clause 13.3 of the Eighth Report on the Trade Marks Bill,
1993 submitted by the Parliamentary Standing Committee, we find
that the Committee expressed its opinion that any symbol relating to
Gods, Goddesses, places of worship should not ordinarily be
registered as a trade mark. However, the Committee did not want to
disturb the existing trade marks by prohibiting their registration as it
will result in a chaos in the market. At the same time, the Committee
trusted that Government will initiate appropriate action if someone
complaints that a particular trade mark is hurting his religious
11Page 12
susceptibilities. This report was presented on 21.04.1994. When the
report was presented, the appellant’s trade mark had not been
registered and the application filed by the respondent herein opposing
its registration was dismissed only on 31.03.2004 by the Assistant
Registrar of Trade Marks.
15) The word “RAMAYAN” represents the title of a book written by
Maharishi Valmiki and is considered to be a religious book of the
Hindus in our country. Thus, using exclusive name of the book
“RAMAYAN”, for getting it registered as a trade mark for any
commodity could not be permissible under the Act. If any other word
is added as suffix or prefix to the word “RAMAYAN” and the alphabets
or design or length of the words are same as of the word “RAMAYAN”
then the word “RAMAYAN” may lose its significance as a religious
book and it may be considered for registration as a trade mark.
However, in the present case, we find that the appellant had applied
for registration of the word “RAMAYAN” as a trade mark. We also find
that in the photographs, after adding “OM’s” to the word “RAMAYAN”,
at the top and in between “OM’s and RAMAYAN”, the sentence, “Three
Top Class Aromatic Fragrance”, is also written. Thus, it is not a case
that the appellant is seeking the registration of the word “OM’s
RAMAYAN” as a trade mark. Further, from the photographs, we find
12Page 13
that the photographs of Lord Rama, Sita and Lakshman are also
shown in the label which is a clear indication that the appellant is
taking advantage of the Gods and Goddesses which is otherwise not
permitted.
16) In National Bell Co. (supra), this Court has held that the
distinctiveness of the trade mark in relation to the goods of a
registered proprietor of such a trade mark may be lost in a variety of
ways e.g. by the goods not being capable of being distinguished as the
goods of such a proprietor or by extensive piracy so that the marks
become public juris. The principle underlying clause (c) of Section 32
is that the property in a trade mark exists so long as it continues to
be distinctive of the goods of the registered proprietor in the eyes of
the public or a section of the public. If the proprietor is not in a
position to use the mark to distinguish his goods from those of others
or has abandoned it or the mark has become so common in the
market that it has ceased to connect him with his goods, there would
hardly be any justification in retaining it on the register.
17) It has also come on record that the word “RAMAYAN” is being
used as a mark for the similar products by more than 20 traders in
Patna and in different parts of the country, and therefore, it has
become public juris and common to the trade.
Conclusion:
18) There are many holy and religious books like Quran, Bible, Guru
Granth Sahib, Ramayan etc., to name a few. The answer to the
question as to whether any person can claim the name of a holy or
religious book as a trade mark for his goods or services marketed by
him is clearly ‘NO’.
19) Moreover, the appellant has not been able to establish that the
word “RAMAYAN” for which he has applied the trade mark had
acquired a reputation of user in the market inasmuch as, we find that
there are more than 20 traders in the city using the word “RAMAYAN”
as a mark for the similar products and also in different parts of the
country.
20) On a perusal of the artistic work said to have been created, there
is no doubt that both the marks are identical in design, colour,
scheme and the reproduction of photographs is in such a manner
that an ordinary buyer would reasonably come to a mistaken
conclusion that the article covered by one brand can be the article
covered by the other. Both the parties have claimed to be
manufacturing units engaged in certain goods.
21) Further, the respondent herein claimed that though he had been
in the business since 1980, he had developed and published the
artistic work in 1986 and has also been using the mark as a
trademark and claiming use since 1986 whereas the appellant herein
claimed use of the trademark since 1987. However, by filing an
application to the concerned authority, the appellant has claimed the
use since 1981. Further, in various pleadings in the Title Suits filed
by the respondent herein, the appellant herein has admitted the use
and publication of the artistic mark of the respondent before the date
of claim of the first use by the appellant, that is, 1987. From these
facts, it is clear that the respondent herein was using the artistic
mark earlier in point of time to that of the appellant herein.
22) In view of the foregoing discussion, we do not find any
irregularity in the order passed by the Board dated 10.01.2005,
consequently, the appeal fails and is accordingly dismissed. However,
the parties are left to bear their own costs.
...…………….………………………J.
(RANJAN GOGOI)
.…....…………………………………J.
(R.K. AGRAWAL)
NEW DELHI;
OCTOBER 27, 2015.
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