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19": ;repealed by the Trade ,ar/s A$t 1999 (+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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