Ashok Kumar Aggarwal And Ors. vs Rajinder Kumar Aggarwal & Ors.
2008 Latest Caselaw 1371 Del

*               HIGH COURT OF DELHI AT NEW DELHI

+                     LPA No.1197/2007


Ashok Kumar Aggarwal and ors.            ..Appellants
                         Through: Mr.Amarjit Singh,
                         Mr.Gurpreet Singh and Ms.Sheetal
                         Deng, Advocates
                         Versus
Rajinder Kumar Aggarwal & Ors.           ...Respondents
                         Through: Mr.Manav Kumar, Advocate

CORAM:
HON'BLE THE CHIEF JUSTICE
HON'BLE DR. JUSTICE S.MURALIDHAR

1.Whether reporters of the local newspapers be allowed
  to see the judgment? No
2.To be referred to the Reporter or not ? YES
3. Whether the judgment should be reported in the Digest ? YES

                              ORDER

% 19.8.2008

This is an appeal from the judgment and order dated 9th

July, 2007 passed by Badar Durrez Ahmed, J in a writ petition

under Articles 226 and 227 of the Constitution of India. By that

judgment the order of the Intellectual Property Appellate Board

dated 9th September, 2004 approving the order of the Assistant

Registrar dated 2nd September, 1994 rejecting the opposition filed

by the respondent No.1 herein to the registration of the trade

mark AGGARWAL and AGGARWAL SWEET CORNER under

application numbers 453308B and 453309 is set aside and the

matter is remanded to the Intellectual Property Appellate Board

for the purposes of considering the question as to whether the

word AGGARWAL which, admittedly is a surname, has acquired

sufficient distinctiveness in relation to appellants' No.2's goods to

be registrable under the Trade and Merchandise Marks Act, 1958

(for brevity sake referred to as "the Act").

2. The facts giving rise to this appeal may be shortly stated.

The appellants number 1 and 2 were trading in the name

and style of Aggarwal Sweet Corner to carry on business of

sweets and namkeens at 3/33, Double Storey, Tilak Nagar, New

Delhi. Later on this business was taken over by appellant No.3

company. The appellants made the aforesaid two applications on

30th April, 1986 for registration of the trade marks "Aggarwal"

and "Aggarwal Sweet Corner" in respect of sweets and

namkeens. In both the applications, the appellants claim user

since 1st June, 1984. On 1st April, 1990, the applications were

advertised in the Trade Mark Journal. On 18th May, 1990, the

respondent N.1 filed his opposition being DEL-6766 under Section

21 of the Act raising objections under Sections 9,11 and 18 of the

Act. The respondent No.1 is the proprietor of Aggarwal Sweets

India, a shop selling sweets and namkeens at 24, West Patel

Nagar, New Delhi. On 17th July, 1991, the appellants filed a

counter claim to the opposition filed by the respondent No.1. On

16th March, 1992, the respondent No.1 filed his evidence under

Rule 53 in the shape of affidavits of six persons. On 10th August,

1994, the matter was heard by the Assistant Registrar and by his

order dated 6th September, 1994, the Assistant Registrar rejected

the respondent No. 1's opposition and accepted the appellants'

applications. The effect of the order dated 6th September, 1994

was that the appellants' right to have the trade marks

AGGARWAL and AGGARWAL SWEET CORNER registered in their

favour was upheld. We may add that the latter trade mark

contained a disclaimer to the effect that it shall give no right to

the exclusive use of the words "SWEET CORNER".

3. Being aggrieved, the respondent No.1 filed an appeal

on 13th September, 1994 under Section 109(2) of the Act before

this Court. The said appeal was numbered as CM(M) 419/1994.

On 23rd April, 1996, in view of Section 100 of the Trade Marks Act,

1999 (which had been enacted in the meanwhile) this Court

transferred the appeal to the Intellectual Property Appellate

Board. The appeal was re-numbered as TA 95/2003/TM/DEL.

Three other appeals connected with the question of registration

of the trademarks AGGARWAL and AGGARWAL SWEET CORNER in

favour of the appellants were also pending before this Court.

They were also transferred and they were numbered as TA

Nos.94, 97 & 100/2003. By virtue of the impugned order dated

9th September, 2004, the Intellectual Property Appellate Board

dismissed all the appeals and confirmed the orders passed by the

Deputy Registrar / Assistant Registrar, as the case may be.

4. The respondent No.1 being aggrieved approached this

Court by filing a writ petition under Articles 226 and 227 of the

Constitution of India, which came to be allowed by the learned

single Judge by order under appeal. The learned single Judge

held that the word AGGARWAL cannot be registered as the trade

mark unless distinctiveness is established on the part of the

appellants. The learned Judge referred to the provisions of

Section 9 of the Act to hold that without distinctiveness, the word

AGGARWAL, because it was both a surname and also the name of

a sect/caste, could not be registered. The learned single Judge

noted that in the impugned order of the Intellectual Property

Appellate Board there is no discussion with regard to the

evidence of distinctiveness of the surname AGGARWAL in relation

to the appellants' goods. In fact the Appellate Board appears to

have taken the view that once user was established, it was

sufficient for the purpose of the case. Consequently, the order of

the Appellate Board was set aside and the matter was remanded

to the Appellate Board for the purpose of considering the

question as to whether the word AGGARWAL has acquired

sufficient distinctiveness to be registrable under the Act.

5. The short question which falls for consideration in this

appeal is whether the word AGGARWAL can be registered as a

trade mark? Section 9 of the Act, which is material for the

purposes of this appeal reads as follows:

"9. Requisites for registration in Parts A and B of the register.- (1) A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely:-

(a) the name of a company, individual or firm represented in a special or particular manner;

(b) the signature of the applicant for registration or some predecessor in his business;

(c) one or more invented words;

(d) one or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;

(e) any other distinctive mark.

(2) A name, signature or word, other than such as fall within the descriptions in clauses (a), (b), (c) and (d) of sub-section (1) shall not be registrable in Part A of the register except upon evidence of its distinctiveness.

(3) For the purposes of this Act, the expression "distinctive" in relation to the goods in respect of which a trade mark is proposed to be registered,

means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to sue within the extent of the registration.

(4) A trade mark shall not be registered in Part B of the register unless the trade mark in relation to the goods in respect of which it is proposed to be registered is distinctive, or is not distinctive but is capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

(5) In determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which-

(a) a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.

(6) Subject to the other provisions of this section, a trade mark in respect of any goods-

(a) registered in Part A of the register may be registered in Part B of the register; and

(b) registered in Part B of the register may be registered in Part A of the register; in the name of the same proprietor of the same trade mark or any part or parts thereof."

6. Mr.Amarjit Singh, learned counsel appearing for the

appellants, strenuously contended that under Section 9(1)(d) of

the Act, a surname or a personal name or any common

abbreviation thereof or the name of the sect, caste or tribe

qualifies for registration if the same has no direct reference to the

character or quality of the goods and not being according to its

ordinary signification, a geographical name or a surname. The

surname AGGARWAL has no direct reference to the character or

quality of sweets or namkeens nor in its ordinary signification

refer to the said trade. According to him, evidence of

distinctiveness is required only for such marks which do not fall

under Clause (d) of sub-section (1) of Section 9 and marks

covered by the said provision are registrable under the law

without there being any requirement of establishing

distinctiveness by evidence of use. Learned counsel urged that

distinctiveness of mark is acquired by use and as such the user

was only relevant consideration to determine the registrablity of

the mark and not distinctiveness as provided under Section 9(2)

of the Act.

7. On the other hand, Mr.Manav Kumar, learned counsel

appearing for the first respondent, submitted that Section 9(1)(d)

of the Act clearly lays down that surname, personal name or

name of caste / sect are to be considered registrable only upon

evidence of distinctiveness. The Intellectual Property Appellate

Board failed to address the issue of distinctiveness and,

therefore, the learned single Judge has rightly remanded the

matter back to the Appellate Board to decide as to whether the

word AGGARWAL has acquired sufficient distinctiveness in

relation to the appellants' goods.

8. A trade mark, before it can be considered for registration,

must first satisfy the requirement of the Section 9 of the Act. For

registration in part A of the register the necessary qualifications

are contained in sub-sections (1) to (3) and (5). For part B

registration the mark should qualify under sub-sections (4) and

(5). The question is whether the word AGGARWAL, which is

admittedly a surname and name of a sect / caste can be

registered under Section 9(1)(d) or Section 9(2) of the Act.

Section 9(1)(d) says that a trade mark shall not be registered in

part A of the register unless it contains or consists of "one or

more words having no direct reference to the character or quality

of the goods and not being, according to its ordinary signification,

a geographical name or a surname or a personal name or any

common abbreviation thereof or the name of a sect, caste or

tribe in India." The words of import are "a surname or the name

of a sect, caste in India" and "according to its ordinary

signification". There is no dispute that AGGARWAL is a surname

and also name of a caste / sect in India according to its ordinary

signification within the meaning of Section 9(1)(d) of the Act.

Thus, the word AGGARWAL being a surname and a name of a

caste / sect is not registrable under Section 9(1)(d) of the Act.

9. But such a surname or a name of a caste / sect is not an

absolute disqualification for the purpose of its registration in Part

A of the register because by reason of Section 9(2) of the Act it is

expressly provided, inter alia, other than such as fall within the

descriptions in Clauses (a), (b), (c) and (d) of Sub-section (1) shall

be registrable in Part A of the register upon evidence of its

distinctiveness. Therefore, a surname or name of a caste or sect

is registrable "on the evidence of distinctiveness". The whole

point in this appeal, therefore, would be whether there is

evidence of distinctiveness. There is a definition in Sub-section

(3) of Section 9 of the Act which says that for the purposes of the

statute the expression "distinctive in relation to the goods in

respect of which a trade mark is proposed to be registered,"

means adapted to distinguish goods with which the proprietor of

the trade mark is or may be connected in the course of trade

from goods in the case of which no such connection subsists

either generally or where the trade mark is proposed to be

registered subject to limitations, in relation to use within the

extent of its registration. Subsection (4) of Section 9 of the Act

deals with Part B of the register and provides inter alia, that a

trade mark shall not be registered in Part B unless the trade mark

is distinctive, or is not distinctive but is capable of distinguishing

goods. Part B therefore of the register may include a mark which

is not distinctive but capable of distinguishing. By sub-section (6)

of Section 9 of the Act the statute gives certain guidelines for

determining whether a trade mark is distinctive or is capable of

distinguishing and it provides inter alia that in making such a

determination the Tribunal may have regard to the extent to

which (a) a trade mark is inherently distinctive or is inherently

capable of distinguishing as aforesaid, and (b) by reason of the

use of a trade mark or of any other circumstances, the trade

mark is in fact so adapted to distinguish or is in fact capable of

distinguishing. This brief analysis of the relevant provisions of

Section 9 of the Act shows that a surname can be registered in

Part 'A' only on the evidence of distinctiveness. The position in

law therefore may be stated to be that there is a prima facie bar

to the registration in Part 'A' of a surname and/or name of caste /

sect simpliciter but this bar can be overcome on the evidence of

distinctiveness by the express provision of Section 9(2) of the

statute.

10. Every trader has a right to trade in his own name and

ought not to be hampered in its use. One has, therefore, to

consider the interests of other persons having the same surname

who might at any time carry on trade in the goods. A surname,

therefore, is considered prima facie not adapted to distinguish for

the purpose of registration in part A. For the same reason, a

personal name is considered not registrable in part A. A

surname, therefore, is considered not registrable in part A

without evidence of distinctiveness. Common abbreviation of

surname, or personal name is to be considered on the same

footing as a surname or a personal name. (See P. Narayanan's

Law of Trade Marks and Passing Off (6th edition), para 8.20).

11. In the instant case, the Appellate Board has not

considered the issue of distinctiveness of the surname

AGGARWAL in relation to the appellants case. It appears that the

Appellate Board was only concerned with the issue of user and

once that was established, according to it, it was sufficient for the

purpose of the case. The following observation in the impugned

order would indicate this:

"We believe that so much of the documentary evidence for this period is enough to establish that there was a user as from the date claimed in the application and it was a consistent user.?

12. In fact the Appellate Board has erroneously held that sine

qua non for entitlement under section 9 is that one who contests

the mark should be prior user in time and even should have been

consistently using the mark from the date so claimed. It is not at

all a condition precedent for moving an application opposing a

registration that the applicant must be a prior user or even an

user at all. The Appellate Board has not even touched the subject

of distinctiveness and has decided the matter solely on the basis

of establishing the user of the appellants from the date it claimed

in its application for registration.

13. In the result, we find that the appeal is devoid of any

substance and the same is hereby dismissed.

CHIEF JUSTICE

S.MURALIDHAR JUDGE 19th August, 2008 "nm"