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Sona Ana Pana Balraj Alias Subbiah Nadar And Others v. S.P Vadivel Nadar And Sons And Another.
Structured Summary of the Opinion (Delivered by Anantanarayanan, J.)
Factual and Procedural Background
Two related Letters Patent Appeals (A.S. Nos. 560 and 561 of 1956) were instituted by defendants against an injunction granted by a learned Judge (Ramachandra Iyer, J.) restraining defendants from using the registered trade mark "Manthi thope" (used to designate medicinal oils). The appellants contended that "Manthi thope" is a geographical appellation (a village in Tirunelveli District) and therefore ought not to have been registered as a trade mark under the Trade Marks Act, 1940. The respondents had obtained the injunction based on the registered mark.
The Court also noted statutory provisions of the Trade Marks Act relevant to the proceedings: S.6 (issues about registrability), S.23 and S.24 (evidentiary and conclusive effect of registration after seven years), and the statutory remedy for modification or cancellation of registration under S.46 read with S.72. The appellants had separately instituted rectification proceedings (O.P. No. 152 of 1959) seeking expungement of the registration on the Original Side of the Court.
In a related set of appeals (also identified with the same A.S. numbers in the record), the learned Judge had both affirmed an injunction against use of the word "Manthithope" in labels and set aside certain parts of a lower court decree concerning other labels or trademarks. Appellants in that matter complained that qualifying the prohibition could be misleading because the offending labels incorporate the word "Manthithope" as an integral part.
Legal Issues Presented
- Whether registration of the geographical appellation "Manthi thope" as a trade mark (for medicinal oils) is invalid under S.6(1) of the Trade Marks Act, 1940 and related provisions.
- Whether the respondents are entitled to an injunction based on a registration that the appellants allege to be invalid because it is a geographical name.
- Whether the validity of a registered trade mark can be challenged in infringement proceedings when the Trade Marks Act provides statutory remedies for rectification or cancellation (S.46 read with S.72) and when S.23 and S.24 make registration prima facie evidence and, after seven years, presumptively valid except in specified cases.
- In relation to the form and scope of the injunction, whether an injunction against labels containing the word "Manthithope" should extend to entire labels (including other matter) or whether parts of labels may be excepted or exempted.
Arguments of the Parties
Appellants' Arguments
- The name "Manthi thope" is a geographical appellation of a village in Tirunelveli District and therefore ought not to have been registrable as a trade mark; registration of such a geographical name is invalid (relying on S.6(1) of the Trade Marks Act, 1940).
- Because the registration is invalid, the respondents were not entitled to obtain an injunction restraining the appellants from using the name.
- In the related appeals concerning labels, the appellants contended that the labels before the Court incorporated the word "Manthithope" as an integral part; therefore the injunction should bar the entire labels and not be qualified in a way that might mislead or permit future infringements. They also relied on the mandatory injunction directing surrender of labels, slips, etc., constituting the infringement.
Respondents' Arguments
The opinion does not contain a detailed account of the respondents' legal arguments; it records only that the Court heard learned Counsel for the respondents and proceeds to offer clarifications about the scope of the injunction.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Ahmed Sheriff Saheb v. Isak Sheriff Saheb | Principles regarding deceptive similarity and the appropriate form of injunctions in trade mark / label disputes. | The Court relied on the broad principles enunciated in that decision to state that existing labels which include the registered word "Manthithope" as an integral part are offending and that an injunction and mandatory surrender of the existing stock of such labels should issue; the Court also used the authority to explain it would not pre-judge whether future labels excluding the word would be infringing. |
Court's Reasoning and Analysis
The Court reviewed the appellants' contention that the registration of the geographical name "Manthi thope" was invalid. It noted that the learned Judge (Ramachandra Iyer, J.) had considered authorities (including English authorities) and concluded that registering a geographical name is not absolutely prohibited because, although S.6(d)(1) might suggest a prohibition, S.6(e) confers a discretion to register a geographical name if it is distinctive in relation to a particular class of goods (here, medicinal oils).
However, the appellate Court found a shorter and dispositive ground for dismissing the Letters Patent Appeals: the validity of the registration could not be canvassed in the present infringement proceedings. The Court grounded this conclusion in the statutory scheme of the Trade Marks Act:
- S.23: Registration of a trade mark is prima facie evidence of its validity in legal proceedings.
- S.24: After seven years from original registration, the registration is to be taken as valid in all respects unless obtained by fraud or unless it offends S.8 of the Act (the section dealing with special prohibitions, which the Court found not relevant here).
- S.46 read with S.72: The Act provides a special procedure for modification or cancellation of a registered trade mark by any person aggrieved; these are the proper statutory remedies to challenge registration.
The Court further observed that the appellants had already instituted rectification proceedings (O.P. No. 152 of 1959) seeking expungement of the mark. Given that a collateral statutory procedure for cancellation/rectification was pending, and because the Act gives registration evidentiary and (after seven years) presumptive conclusive effect, the Court held it was not open to the appellants to challenge the validity of registration in the present suit for injunction. The learned Judge had taken the same view and relied upon Ss. 23, 24, 46 and 72.
For prudential reasons the Court declined to enter into a detailed examination of the separate question whether a geographical appellation could in principle be registered as a distinctive mark for a particular class of goods. The Court explained that making observations on that controversy while collateral cancellation proceedings were pending would be "most embarrassing" and contrary to the interests of justice; thus the Court refrained from deciding that substantive issue.
In the related appeals concerning the scope of the injunction and the decree, the Court clarified that the learned Judge did not intend to express any opinion on whether future labels that excluded the word "Manthithope" (but were otherwise identical) would infringe. The Court applied the general principle that no one is entitled to use labels for identical goods that are likely, by deceptive similarity, to mislead purchasers. Relying on the principles reviewed in Ahmed Sheriff Saheb v. Isak Sheriff Saheb, the Court concluded that the existing labels were offending because they included the word "Manthithope" as an integral part, and therefore an injunction should issue against those existing labels and the mandatory surrender of existing stock should be directed. The Court expressly refused to anticipate adjudication of future designs or to state whether such future labels would be infringing.
Holding and Implications
Holding:
Letters Patent Appeals (A.S. Nos. 560 and 561 of 1956) are dismissed.
In the related appeals concerning the scope of the injunction and labels, the Court granted a clarification and limited relief: the injunction remains operative against the existing labels that include the word "Manthithope" as an integral part, and the mandatory injunction directing surrender of the existing stock of such labels stands. The Court allowed the Letters Patent Appeals insofar as it provided the clarification described, but otherwise dismissed them.
Implications / Consequences:
- The direct effect is that the injunction against use of the word "Manthithope"/"Manthi thope" in existing labels will stand and the defendants are required to surrender existing infringing labels. The parties were ordered to bear their own costs.
- The appellants may pursue the statutory remedy for cancellation/rectification under S.46 read with S.72 (the Court noted appellants had already instituted such proceedings in O.P. No. 152 of 1959), but they cannot challenge the validity of the registered mark in the present suit for injunction because the Act confers prima facie and, after seven years, presumptive validity (Ss. 23 and 24) except in limited scenarios.
- The Court expressly refrained from deciding the substantive question whether a geographical appellation may be registrable as a distinctive trade mark for a particular class of goods; thus the opinion does not lay down a new precedent on that substantive point. The Court avoided expressing views on the merits of that controversy to prevent prejudicing the pending collateral proceedings.
Disposition recorded in the opinion: "The appeals are accordingly dismissed. The parties will bear their own costs." In the related appeals the Court allowed clarification and otherwise dismissed; costs similarly borne by the parties.
(Delivered by Anantanarayanan, J.)
Both these related Letters Patent Appeals have been instituted respectively by the defendants in A.S Nos. 560 and 561 of 1956 before a learned Judge of this Court (Ramachandra Iyer, J. as he then was) with reference to the injunction granted by the learned Judge in respect of a registered trade mark (Manthi thope), used in the context of designating medicinal oils. In both the appeals, which differ upon the particular facts otherwise, the common ground is that this name, being a geographical appellation of a village in Tirunelveli District, ought not to have been registered as a trade mark. Further it is pleaded that the respondents were not entitled to obtain an injunction of this kind in respect of such an invalid registration offending the provisions of S. 6(1) of the Trade Marks Act, 1940 (V of 1940), which Act governs the parties to this action.
We have heard the arguments of the learned Counsel for the appellants in both the appeals (Sri R. Gopalaswami Aiyangar and Sri M.R Narayanaswami). They have attempted to advance the same proposition as that which was advanced before the learned Judge, namely, that the registration of this trade mark (Manthi thope) even in the context of the designation of a particular class of goods, medicinal oils, amounts to a registration of the geographical appellation of a village as a trade mark, and is thus invalid. On the same ground it is alleged that the respondents are not entitled to injunct the appellants. It is sufficient for us to observe that the learned Judge (Ramachandra Iyer, J.) went into this matter in considerable detail with reference to the authorities cited by him in his judgment, particularly, the English authorities. After reviewing them, the learned Judge came to the conclusion that the registration of a geographical name as a trade mark is not absolutely prohibited, as would have been the case if S. 6(d)(1) had stood alone, but, that by virtue of S. 6(e) there is a discretion to register even a geographical name, if it is distinctive in relation to a particular class of goods, in this case to medicinal oils.
It seems to us that these Letters Patent Appeals must fail upon a shorter and simpler ground, even if there are two views possible upon the above conclusion of the learned Judge. The shorter ground is that it is fairly obvious, having reference to the relevant sections of the Act, that the validity of this registration could not be canvassed at all within the scope of the present proceedings. S. 23 of the Act enunciates that in all legal proceedings, the registration of a trade mark would be prima facie evidence of its validity. S. 24 equally declares that in all legal proceedings relating to a registered trade mark, the original registration of the trade mark, after the expiry of seven years from the date of such original registration, should be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends the provisions of S. 8 of the Act. We may here observe, in passing, that S. 8 has also been referred to by the learned Judge, and that section relates to certain prohibitions of a special kind, such as the existence of a scandalous design, or the use of any design which might be disentitled to protection in a Court of Justice, which are not relevant to the present context.
Under S. 46 of the Act read with S. 72 of the Act, there is a special procedure provided for modification or cancellation of the registered trade mark by any person aggrieved. We might add since, that is also a relevant fact, that the appellants have actually instituted a proceeding under these sections (O.P No. 152 of 1959) which is now pending on the Original Side Jurisdiction of this Court for rectification of the register by expunging this trade mark. Under these circumstances it appears to be abundantly clear to us that the validity of the registration cannot be canvassed at all in these proceedings. The learned Judge (Ramachandra Iyer J.) has taken the same view, and granted the injunction on this ground also, after setting forth the relevant Ss. 23, 24, 46 and 72 of the Act. For an important reason, even if the other limb of the argument has to be dealt with by us, it would not be expedient or in the interests of justice to do so. It may or may not be the case that the respondents are entitled to the registration even of a geographical appellation as a trade mark, as distinctive in application to a particular class of goods (medicinal oils). If that argument stood alone it would be perfectly proper for us to proceed into it in detail, before holding that the injunction should issue. But where the validity of the registration of the trade mark cannot at all be canvassed in a suit for injunction resulting from an alleged infringement of the registered mark, and collateral proceedings are pending under the Act itself for the cancellation of registration it would be most embarrassing and it would not be in the interests of the parties that we should make any observations upon the merits of that controversy. It is sufficient for us to state that the matter of the validity of the registration cannot be gone into within the scope of the present proceedings, and that, for this reason, the Letters Patent Appeals instituted by the two sets of appellants will have to be dismissed.
The appeals are accordingly dismissed. The parties will bear their own costs.
These are related appeals by the respondents in A.S Nos. 560 and 561 of 1956 from the judgment of Ramachandra Iyer J. (as he then was), in respect of actions seeking to restrain the parties concerned from infringement of three registered trade marks. We might immediately state that, in these related appeals, the matter in controversy is within a brief compass. After granting the injunction in favour of the appellants here, the learned Judge (Ramachandra Iyer J.) observed as follows:
“The respondents would, therefore, be entitled to an injunction against the appellants against the use of the word ‘Manthithope’ in the labels of the appellants. To this extent the decree of the lower Court will be affirmed. The decree in regard to the label V trade mark No. 108806, and in regard to trade mark No. 133585 regarding the name Manthithope Manikottai Swamigal will be set aside. There will be no order as to costs in the appeals or in the suit.”
Very briefly stated, the grievance of the appellants here is that after having restrained the defendants by a suitable injunction with regard to the use of the word “Manthithope” which is a registered mark, in any labels, the learned Judge (Ramachandra Iyer J.) was not justified in qualifying the injunction by setting aside of the decree of the lower Court in certain respects, which might be totally misleading in its effect. The argument is that the labels before the Court as such, were the subject matter of the proceedings and that these labels included the word “Manthithope” which was the registered trade mark of the appellants as an integral part of these labels. That being the case, the entire labels came within the bar of the prohibition, and it would be misleading and might give rise to future infringements of the rights of the appellants, to qualify the prohibition by purporting to exempt or to except any portion of the offending labels. Further it is pointed out that under the very decrees in conformity with the judgment of the learned Judge the defendants were directed by a mandatory injunction to surrender all the labels, slips etc., constituting the infringement.
We have heard the learned Counsel for the respondents also, and we think that all that this matter needs is a little clarification. Presumably, what the learned Judge intended by his observation was that he was expressing no opinion on the question whether the labels which might be issued in future by defendants which excluded the word “Manthithope” but which in all other respects were identical with the labels now in use, would come within the mischief of the prohibition or not. It is obvious that this situation results from the very findings of the learned Judge. Obviously, we can express no opinion upon any future labels which might be used by the defendants which do not include the word “Manthithope”. Such labels may offend, or may not offend, that must be left to future adjudication. All that can be stated now is the general principle that no one is entitled to use labels in respect of an identical class of goods which are likely, by any deceptive similarity, to lead the unwary purchaser into making an error. The authorities on this aspect as well as on the form of the injunction which may suitably be granted in such cases have been reviewed in Ahmed Sheriff Saheb v. Isak Sheriff Saheb (1), a judgment delivered by one of us. It is sufficient for us to observe, in conformity with the broad principles enunciated in that decision, that as regards the existing labels, they are offending for the simple reason that they include the word “Manthithope” as an integral part of their design. For these reasons, the injunction will issue against these labels as they stand, and the mandatory injunction will require the defendants to surrender the existing stock of such labels. There is really no necessity to qualify the decree by exempting or excepting any part of the labels as they now appear. We express no opinion on the question whether, in future the defendants would be within their rights in using the labels which do not include the word “Manthithope” but are otherwise identical with the existing designs. That would depend on the application of the principle regarding the bar of a design which amounts to a deceptive resemblance, stated by us above. It is unnecessary to anticipate the merits of any such future claim or counter claim. With these observations the Letters Patent Appeals are allowed to the extent of the clarification indicated by us, but otherwise dismissed. The parties will bear their own costs.
V.C.S
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