Bombay High Court
Central Camera Co. Private Ltd. vs Registrar Of Trade Marks on 16 January, 1980
JUDGMENT M.L. Pendse, J.
1. This is an appeal preferred under section 109 of the Trade and Merchandise Marks Act, 1958 against the order dated August 24, 1976 passed by the Assistant Registrar of Trade Marks.
2. The facts which have given rise to the present petition are as follows:
On June 25, 1974, the petitioners filed an application bearing No. 297099 to register a trade mark in part 'A' of the Register consisting of the words "Solar" in respect of Photographic Apparatus, Studio Lights, Projectors, Photographic Enlargers and parts and accessories of the aforesaid goods in Class 9. The Registrar took objection to the registration of the mark on the ground that certain trade marks were already registered consisting of the words "Solamer", "Solarton" and "Solinar". The three words were already registered in respect of the same goods or goods of the same description. The Registrar, at a latter stage, raised another objection under section 9 of the Trade and Merchandise Marks Act on the ground that the word "Solar" has direct reference to the character or quality of the goods applied for registration. The petitioners filed their reply pointing out that the mark submitted for registration is in use since the year 1971 and is not descriptive of the goods. The petitioners also contended that the mark has become distinctive and the objection under section 9 of the Act was not even raised by the Registrar on an earlier occasion.
3. The Registrar, after considering the submissions made by the petitioners, refused the registration of the mark. Subsequently, the Registrar has passed an order giving the ground for refusal under Rule 41(1) of the Trade and Merchandise Marks Rules, 1959. The grounds given are that the mark submitted for registration is descriptive of the goods and is not registerable under section 9(1)(d) of the Act. The Registrar has relied upon the description of the word "Solar" as given in Chamber's Technical Dictionary and the Webster New International Dictionary. The Registrar has drawn heavy support on the decision in the matter of an application of the Eastman Photographic Materials Company. Ltd., reported in 15 R.P.C. 476. to hold that the mark is descriptive. The Registrar also held that the mark cannot be registered in view of the prohibition under section 12(1) of the Act as the mark is identical or deceptively similar to the three marks already registered. The order of the Registrar is under challenge.
4. Mr. Tulzapurkar, the learned Counsel appearing in support of the petitioner, submitted that the order of the Registrar is entirely erroneous and the Registrar has misread the decision in the matter of an application of the Eastman Photographic Materials Company. Ltd., reported in 15 R.P.C. 476. to come to the conclusion that the mark is descriptive of the goods. The learned Counsel submitted that the goods for which the mark is being registered has no direct reference to the Sun and the Registrar was in error in refusing the registration merely because there is some covert relation of the goods with the Sun. Mr. Tulzapurkar also submitted that the finding of the Registrar under section 12(1) of the Act is misconceived and no reasons have been assigned to hold that the prohibition under section 12(1) of the Act is attracted. Mr. Tulzapurkar also submitted that the Registrar has clearly overlooked that the mark is in use from the year 1971 onwards and the petitioners would have been entitled to claim advantage under section 12(3) of the Act. In answer to this submission, Mr. Sethna, the learned Counsel appearing on behalf of the Registrar, submitted that the view taken by the Registrar is a correct view and requires no disturbance in this appeal. Mr. Sethna submitted that the petitioners cannot claim the exclusive use of a word descriptive of the quality or character of any goods and such words of description are the property of all mankind and the petitioners should not be permitted to monopolise the use of the word.
5. In view of the diverse submissions, the first contention which requires answer is whether the order passed by the Registrar holding that section 9(1)(d) of the Act is a complete bar to the registration of the mark either in part "A" or part "B" of the Registrar is correct. Section 9(1)(d) of the Act reads as follows :
"9(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) ... ... ... ...
(b) ... ... ... ...
(c) ... ... ... ...
(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."
Sub-section (4) of section 9 of the Act provides that the trade mark shall not be registered in part B of the Register unless the 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 the goods. The Registrar has refused to register the mark both in part A and part B of the Register on the ground that the mark has direct reference to the character or quality of the goods and is not distinctive or capable of distinguishing the goods. The word "Solar" undoubtedly pertains to the Sun and means produced by or coming from the Sun as solar energy. Now, it is necessary to determine whether the word "Solar" has direct reference to the character or quality of the goods. The goods in respect of which the mark is proposed to be registered are photographic apparatus, studio lights, projectors, etc. and it is difficult to hold that the working of these apparatus depends exclusively on the light of the Sun. Mr. Tulzapurkar is right in his submission that unless the word has direct reference to the character or quality of the goods, the prohibition under section 9(1)(d) of the Act is not attracted. Mr. Sethna submitted that the main feature or the purpose of the photography is the light or the heat secured from the Sun and, therefore, the order of the Registrar holding that the mark has direct reference to the character or quality of the goods is correct. In my judgement, unless the word has direct reference to the character or quality of the goods is correct. In my judgment, unless the word has direct reference to the character or quality of the goods or in other words, the predominant feature of the goods depends upon the light or the heat from the Sun. It cannot be held that the prohibition under section 9(1)(d) of the Act is attracted. It is common knowledge that the work of photography can be done not necessarily in the light generated by the Sun but also on the artificial light. The goods in the present case are studio lights, projectors, enlarges and by no stretch of imagination it can be held that these goods have direct reference to the character or quality of the goods. In this connection, Mr. Tulzapurkar placed reliance upon the decision of the Division bench of the Delhi High Court in the case of Mohd. Rafiq & another v. Modi Sugar Mills Ltd., . The question which came up before the Delhi High Court was in a proceeding instituted for rectification of the registration of a trade mark "Sun" in respect of lanterns and globes for lamps. The rectification proceedings ended in dismissal in the trial Court and in appeal the Division Bench refused to rectify the registration of the trade mark "Sun". In support of the rectification, it was claimed that the word "Sun" when used in respect of lanterns is a laudatory term which has reference to the character or quality of the goods. The Division Bench turned done the contention and Mr. Justice Khanna, as he then was, speaking for the Bench observed as follows :
"We are unable to accede to the contention that the word "Sun" used in respect of the lanterns manufactured by the respondent is a laudatory term having reference to the character and quality of those lanterns. It is no doubt true that the rays of sun dispel darkness and lanterns too are used for dispelling darkness, it does not follow from that the use of trade mark "Sun" for the lanterns has reference to the character and quality of those lanterns. The reference to the character and quality, in our opinion, should be direct and plain and not remote and far-fetched. Likewise, the word, which is sought to be construed as laudatory, should have obvious signification of praise, and not one out of which an inference of praise has to be spelt out by the laboured process. Sun is the body which is the gravitational centre and source of light and heat to our planetary system."
This judgment undoubtedly supports the submission of Mr. Tulzapurkar that unless there is a direct reference to the character or quality of the goods, it is not permissible to refuse registration under section 9(1)(d) of the Act on the strength of remote and far-fetched reference.
6. The Assistant Registrar in support of his order has drawn heavily upon the decision in the matter of an application of the Eastman Photographic Materials Company Ltd., reported in 15 R.P.C. 476. and has quoted two passages to hold that-the word "Solio" is purely descriptive of the photographic goods. Mr. Tulzapurkar pointed out that the reliance by the Assistant Registrar on those two passages is entirely erroneous as it is assumed that the passages quoted in the order are part of the decision of the House of Lords. The two passages quoted are :
"It is, I think common knowledge that the sun's light is an important factor in printing on photographic paper and is popularly associated with the processes of photography and I consider that, used in connection with photographic paper the word "SOL" or any compound word consisting principally of the word "SOL" would generally be taken and I myself should take it as having some reference to the character or quality of the goods".
"Sun light is operative in producing impressions on photographic paper, it comes within the prohibition against using the word which are descriptive of the character or quality of the goods in respect of which the word is sought to be registered."
In the case before the House of Lords, the application was made to register the word "Solio" for photographic paper. The Comptroller-General refused to register the word on the ground that it was the practice of the Patent Office to refuse any device of the sun, or any word indicating the sun, in connection with photographic materials, as having some reference to the quality or character of the goods. In appeal in the High Court, it was found that the word "Solio" would be understood to refer to the sun, and that, as applied to photographic paper, it had reference to the character or quality of the goods. In a further appeal, the Court of Appeal held that though the word was invented word which has some reference to the character or quality of the goods and, therefore, the mark should not be registered. The matter came up before the House of Lords and the House of Lords took the view that the word was an invented word and it has no reference to the character or quality of the goods in question. The first quotation in the order of the Assistant Registrar appears on page 478 where the contents of the affidavit made by the Registrar of Trade Marks before the Board of Trade are summarised. It is obvious that the Assistant Registrar has quoted the contents of the affidavit filed by the Registrar and erroneously assumed that what is stated in the affidavit is conclusion of the Court. It is clear misreading of the decision and the order of the Assistant Registrar based on that observation cannot be sustained.
7. The second quotation is also mis-quoted. On page 483 of the Report, the Lord Chancellor in his speech observed, 'that not much reliance is placed upon the word having some meaning in a foreign tongue, but what is put is that it may have extracted from it some meaning in relation to the character or quality of the goods." It is obvious from this part of the speech of Lord Chancellor that what was being considered was a submission made on behalf of the Registrar and that submission cannot be treated as a judgment of the Court. In fact, in the latter portion of the speech, Lord Chancellor has specifically turned down the submission holding that the word "Solio" does not indicate the character or quality of the goods. In my judgement, the Assistant Registrar has clearly mis-read the judgement reported in 15 R.P.C. 476 and has arrived at an erroneous conclusion. If the judgment would have been properly appreciated, I have no doubt that the Assistant Registrar would not have refused registration under section 9(1)(d) of the Act. In this view of the matter, the order of the Assistant Registrar holding that the mark submitted for registration is descriptive of the goods and is not registerable under section 9(1)(d) of the Act deserves to be set aside. As I am holding that the mark is not descriptive of the goods. I need not consider the alternate submission of Mr. Tulzapurkar that the Assistant Registrar ought to have considered whether the mark could be registered in part B of the Register.
8. That takes me to the second ground of objection on which the Assistant Registrar has refused to register the mark. The Assistant Registrar has held that the proposed mark of the petitioners would conflict with the three marks already registered and, therefore, the prohibition under section 12(1) of the Act is attracted. The Assistant Registrar has given no reasons to come to that conclusion. Apart from that, in my judgement, it was not proper on the part of the Assistant Registrar to refuse registration on this ground without advertising the application. The Assistant Registrar has proceeded to reject the application at an initial stage and the practice of refusing registration under section 12(1) of the Act at that stage is not proper. It is desirable that the mark is advertised and opposition is invited and thereafter the decision is recorded as that would avoid the multiplicity of litigation and would also enable the Assistant Registrar to pass his order on the material produced by the holders at the mark filing their opposition. It is undoubtedly true that the Assistant Registrar has got powers to reject the application at initial stage itself but to avoid multiplicity of litigation and costs to the litigants, it would be desirable if the Assistant Registrar upholds the objection under section 12(1) of the Act after advertising the mark in the Trade Journals. In the present case, the Assistant Registrar has not assigned any reasons, nor has obtained the advantage of finding out what opposition would be filed by the holders of the three marks already registered. In these circumstances, it would not be fair to hold that the objection under section 12(1) of the Act is right or otherwise. The decision one way or the other would affect the important rights of the holders of the marks already registered. In these circumstances, in my judgement, the best course would be to set aside the order passed by the Assistant Registrar upholding the objection under section 12(1) of the Act and remit the proceedings back to the Assistant Registrar for proceeding further according to the law. The Assistant Registrar will advertise the mark in the Trade Journals and thereafter determine whether the mark can be registered or otherwise. I am not deciding on merits whether the objection under section 12(1) of the Act is valid or otherwise and that is left for the decision of the Assistant Registrar, but only after the mark is advertised.
9. Accordingly, the petition succeeds and the order of the Assistant Registrar is set aside. The objection that the mark cannot be registered under section 9(1)(d) of the Act is over ruled and the matter is remitted back to the Assistant Registrar proceeding further in accordance with law in the light of the observations made hereinabove. The Assistant Registrar should accept the mark and proceed to advertise. In the circumstances of the case, there will be on order as to costs.