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Lakhpat Rai Sampat Rai Sadh v. Dhanpat Rai Goel Respendents.
Factual and Procedural Background
This is an appeal brought under Section 109 of the Trade and Merchandise Marks Act, 1958 against an order of the Assistant Registrar for Trade Marks, New Delhi. The Assistant Registrar had dismissed an application by Messrs Lakhpat Rai Sampat Rai Sadh (the appellants) under Section 56(2) of the Act seeking rectification of the register in relation to an entry for registered trade mark No. 186774 in Class 5, registered in the name of Dhanpat Rai Goel (the respondent), in respect of "Banslochan" (an ayurvedic medicine). The appellants sought either expungement of that registration or variation by deletion of the device of a "bamboo grove" and the word "Banslochan" appearing in the respondent's mark.
The Assistant Registrar's factual findings, which were not disputed, include that the appellants have manufactured and sold for more than 75 years an ayurvedic tonic called "Banslochan" prepared from a particular kind of bamboo and are proprietors of earlier registered trade mark No. 148579 in Class 5 consisting of a pictorial device of a jungle/grove of bamboos with the words "Bans Ka Jungle" and "Asal Banslochan". That pictorial device was adopted by the appellants in 1945. The appellants had long and extensive use, substantial sales and advertising expenditure, and a high market reputation for goods bearing their mark. Their registration included a disclaimer that it gave no right to the exclusive use of the device of a bamboo.
The respondent adopted and sold "Banslochan" in tin containers with a label displaying a pictorial device of a bamboo grove similar to the appellants' device together with a monogram "BBC" at the foot of the device. The Assistant Registrar, accepting some of the respondent's arguments, dismissed the appellants' rectification application, and the appellants appealed to the court.
Legal Issues Presented
- Whether the pictorial device of a "bamboo grove" in the appellants' registered mark is descriptive of the goods or distinctive (i.e., whether it has trade mark value deserving protection).
- Whether the respondent's mark, which also prominently displays a bamboo-grove device together with the monogram "BBC", is deceptively similar to the appellants' mark such that it is liable to deceive or cause confusion under Sections 11 and 12(1) of the Act.
- Whether the appellants' disclaimer of exclusive use of a bamboo device prevents them from obtaining relief against the respondent's adoption of a bamboo-grove device.
Arguments of the Parties
Appellant's Arguments
- The appellants asserted long prior and continuous use (more than 75 years) of the name and mark "Banslochan" and their pictorial device of a bamboo grove adopted in 1945, giving it substantial reputation and distinctiveness in the market.
- The appellants relied on the acquired reputation of their pictorial device as an identifying mark for their goods sold in labelled tin containers and on substantial sales and publicity establishing distinctiveness in the trade.
- Counsel for the appellants (Mr. Anoop Singh) cited decided cases (including the Orange Grove case and others) to support distinctiveness of pictorial or composite marks in analogous circumstances.
- They argued that the disclaimer applied to the device of a bamboo as such, but not to the specific depiction of a "bamboo grove" (the appellants' device), and thus the disclaimer did not bar protection for the particular distinctive representation used by them.
Respondent's Arguments
- Mr. N.K. Anand, counsel for the respondent, contended that since "Banslochan" is an extract prepared from bamboos, a cluster or grove of bamboos is merely descriptive of the goods and therefore lacks distinctive character.
- It was argued that customers would not attach trade-mark significance to the bamboo device and instead would refer to other features (such as the proprietor's name or other words) to identify the goods.
- Mr. Anand further argued that the respondent's monogram "BBC", prominently displayed at the foot of the device, distinguishes the respondent's mark from the appellants' mark, preventing confusion in the normal course of trade.
- The Assistant Registrar accepted aspects of these submissions in dismissing the rectification application, reasoning that the bamboo device was descriptive and that the respondent's monogram was a distinguishing feature.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Orange Grove Fruit Drink's Limited's Appeal | Accepted the words "Orange Grove" for registration in respect of orange cordials as being distinctive (as stated in the opinion). | The court regarded the facts of the Orange Grove case as strikingly analogous ("on all fours") and noted it supported the conclusion that a pictorial/composite representation can be distinctive; the court cited it in support of finding distinctiveness of the appellants' bamboo-grove device. |
| Harry Reynolds v. Laffeaty's Ltd., 1958 RPC 387 | This case was referenced by the court; the opinion includes it in a parenthetical list of similar authorities but does not elaborate the principle within this text. | The court listed it as an illustrative authority in support of the general proposition that certain signs or composite representations may be distinctive; no separate, detailed application of its ratio is set out in the opinion. |
| "Pomril" case, 38 RPC 181 | Referenced by the court as another authority in the same line; the opinion does not set out the detailed rule from the case within the text. | Cited alongside other authorities to indicate that analogous authorities exist; the opinion does not elaborate a specific application beyond citing it as supportive background. |
| Registrar of Trade Marks v. Ashok Chandra Rakhil Ltd., AIR 1955 SC 558 | The Supreme Court observed that the proviso to Section 17 (under which a disclaimer may be added) preserves any right the proprietor may otherwise have under any other law relating to the mark or any part thereof. | The court relied on this observation to reject the submission that the appellants' disclaimer of the device of a bamboo entirely precluded protection for the appellants' distinctive "bamboo grove" representation; the court held that the disclaimer did not bar the appellants' claim to relief for the grove device. |
Court's Reasoning and Analysis
The court undertook a focused analysis of whether the appellants' pictorial device of a "bamboo grove" was merely descriptive of the goods or was distinctive and therefore entitled to protection. The court's reasoning proceeded in the following steps, as reflected in the opinion:
- Distinction between the generic element and the specific depiction: The court emphasized that while "bamboo" as such may be descriptive (since the product is prepared from bamboo), the specific artistic/design representation of a bamboo grove is a different matter. The court noted that bamboo can be depicted in many manners and that the particular aggregation or arrangement (here, a grove) may convey a distinguishing idea.
- Assessment of distinctiveness by impression on the public: The court accepted the Assistant Registrar's factual finding that the appellants' device produces the initial impression of a jungle/grove of bamboos and that consumers might refer to the appellants' goods by the distinctive combined label "Bans Ka Jungle Banslochan". From this, the court concluded that the grove depiction is capable of making an impression and is not merely a descriptive photographic representation lacking originality.
- Analysis of the respondent's mark and the monogram "BBC": Although the respondent's mark also contained a bamboo-grove device, the court examined whether the prominent placement of the monogram "BBC" would obliterate or neutralize the visual impression of the grove. The court concluded that the monogram does not obliterate the prominent grove device and thus does not remove the likelihood of confusion.
- The test of deceptive similarity applied from the viewpoint of an ordinary customer: The court emphasized that for determining deception or confusion, the two marks are not to be compared side-by-side; rather, the unwary customer relies on general recollection and overall impression. Because both marks produce substantially similar general impressions due to the grove device, a consumer is likely to be misled into believing they are the same or connected, causing the confusion the statute seeks to prevent.
- Statutory bar under Sections 11 and 12(1): The court applied the statutory standards, noting that a mark which by its use would be likely to deceive or cause confusion cannot be registered (Section 11), and that no mark identical with or deceptively similar to an existing registered mark in the name of another proprietor for the same goods can be registered (Section 12(1)). The court held that these provisions bar registration of the respondent's mark in the present circumstances.
- Effect of disclaimer: Addressing the respondent's argument and the Assistant Registrar's reliance on the appellants' disclaimer of the bamboo device, the court noted the legal distinction between a disclaimer of the device of "a bamboo" and protection for the appellants' specific "bamboo grove" depiction. Relying on the principle from Registrar v. Ashok Chandra Rakhil Ltd. (AIR 1955 SC 558), the court held that the disclaimer did not extinguish the appellants' right to protect their distinctive representation of a grove.
- Reliance on analogous authority: The court stated that the conclusion was so obvious that extensive examination of authorities was unnecessary, but observed that the Orange Grove case was particularly analogous and reinforced the conclusion that a composite or pictorial representation can be distinctive for the relevant goods.
Holding and Implications
Core Ruling: The court allowed the appeal. It set aside the order of the Assistant Registrar and allowed the appellants' application for rectification under Section 56(2) of the Act. The court ordered that the entry in the register relating to the respondent's registered trade mark (noted in the opinion as No. 185774 in the dispositive paragraph) be varied by deleting the device of the bamboo grove appearing in that mark. The respondent was ordered to pay the appellants' costs of the appeal (counsel fee Rs. 200).
Implications:
- The direct effect is to remove the bamboo-grove pictorial element from the respondent's registered trade mark entry on the register, thereby protecting the appellants' distinctive "bamboo grove" device from use by the respondent in the registered mark.
- The court treated the appellants' specific depiction (grove) as distinctive despite a disclaimer as to a generic bamboo device; thus, a disclaimer of a generic element does not necessarily preclude protection for a particular artistic or composite depiction that has acquired distinctiveness.
- The opinion does not state that it is establishing a novel legal principle; rather, it applies existing statutory provisions (Sections 11 and 12(1)) and relies on analogous authorities. The practical consequence is the relief granted to the appellants and the variation of the respondent's registered entry; no broader new precedent is explicitly proclaimed in the opinion.
P.N Khanna, J.:— This appeal under Section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter called the “Act)” is directed against the order of the Assistant Registrar for Trade Marks, New Delhi, by which he dismissed the application of Messrs Lakhpat Rai Sampat Rai Sadh (here in called the “appellants”) under Section 56(2) of the Act for rectification of the register in respect of entry relating to the registered trade mark No. 186774 in class 5, registered in respect of “Banslochan”, an ayurvedic medicine, in the name of Dhanpat Rai Goel (herein called the “respondent”). Rectification was sought either by expunging the entry relating to the registered trade mark No. 186774 registered as of September 5, 1958, or by varying it by deleting the device of “bamboo grove” and word “Banslochan appearing in the mark. According to the facts, as found by the Assistant Registrar of Trade Marks and about which there is no dispute, the appellants claim to have been manufacturing and selling for more than 75 years an ayurvedic tonic for health named “Banslochan” prepared from the extract of a particular kind of bomboo. They are the proprietors of registered trade Mark No. 148579 in class 5 in respect of “Banslochan” consisting of a pictorial device of a jungle or grove of bomboos with the words “Bans Ka Jungle” and Asal Banslochan-”. The pictorial device of a bomboo grove, clamed to be an artistic display of bomboos, was adopted by them in 1945. Since they have been continously and extensively using the said trade mark in respect of their goods. The value of their “Banslochan”, sold under the said trade Mark, amounted to several lacs of rupees every year and they had been spending on its publicity over Rs. 10,000/- a year They have been recognised as the oldest and most relaible manufacturers of “Bansloebon”. They sell these goods in tin containers with the labels bearing their aforesaid trade mark which has acquired high reputation in the market. The appellants do not claim exclusive right over the use of the word “Banslochan”, being the name of the goods itself or over the device of a bamboo, which is descriptive of the goods. Their trade mark was registered subject to the disclaimer that it shall give no right to the exclusive use of the device of a bomboo.
2. The Assistant Registrar observed that from visual aspect, the device of bamboos forms the most prominent feature of-the appellants trade mark. The first impression formed in a purchaser mind, according to him, would, is all probability, be that of a jungle of bomboos. The words “Bans ka Jungle” in Hindi script, printed in small type under the said device, according to him, formed the real feature of a trade mark value of this mark. He was of the opinion, that some at least of the consumers might be referring to the appellants goods by the name, “Bans ka Jungle Banslochan.” The respondents sorted selling “Banslochan” packed in tin containers with a labie displaying the impugned trade mark consisting of the pictorial device of a bomboo grove more or less similar to that of the appellants.” with a monogram consisting of letters “BBC”, placed at the foot and covering a small part of the said device.
3. It has been argued by Mr. N.K Anand, learned counsel for the respondent, which argument was also adopted by the Assistant Registrar, that “Banslochan” being an extract prepared from bamboos, the cluster or the grove of bamboos is merely descriptive of the goods and has no distinctive character. The customers in general would be aware of this and would, therefore, not attach much trade mark significance to the device of bamboos. They may either look to the proprietors name or to some other words or feature by which the trade mark can be remembered. On the other hand, the display of monogram “BBC” in the respondents trade mark, said Mr. Anand, is so prominent that it attracts the attention of the customers This monogram, it was claimed, distinguishes the respondents mark from that of the appellants. The respondents trade mark, it was urged, was not ???eiy, under the circumstances, to be mistaken for the appellants trade mark in the normal course of trade.
4. To me the arguments of Mr. Anand and the reasoning adopted by the Assistant Registrar do not appear to be convincing. The question involved is whether the device of a ‘bamboo grove’ or “Baas ka Jungle” is descriptive or distinctive. If merely the former, it has no trade mark value: but if the latter, it cannot be ignored. Merely because “Banslochan” is an extract prepared from special type of bamboos does not mean that a peculiar design in which the bamboos may be displayed, would also be descriptive. Bamboo, per se may be descriptive, but not so the design in which it may be depicted. The argument that the ‘bamboo grove’ appearing in the appellants trade mark is nothing but a photographic view of a cluster of bamoos without any originality or idea or design cannot be accepted. Bamboo can be displayed in a variety of manners. It may be one bamboo stick or a bundle or bamboo sticks placed either horizontaly or vertically against a wall or some other object or depicted in any other way. The manner in which the bamboos can be aggragated or arranged can be distinctive. Bamboos shown growing in a wild grove certainly convey a distinguishing idea. “Banslochan” may be said to be an extract prepared from bamboos but it is not prepared from a ‘grove’, the idea of which is conveyed by the appellants trade mark, and which must be said to be distinctive. The pictorial device of ‘bamboo grove’ or Bans ka Jungle is the appellants trademark, therefore, cannot be brushed aside merely by saying that it is desiptive of the goods sold under its banner, which it is not. The device of the bamboo grove is capable of making an impression on the minds of the customers who as observed by the Assistant Registrar himself, are likely to order the appellants goods by the distinctive name of Bans Ka Jungle Banslochan”.
5. The trade mark of the respondent also gives an equal prominence to the pictorial device of a bomboo grove. The question therefore, arises whether the monogram “BBC” prominently displayed at the foot of the said grove, is capable of wiping out the impression of the bamboo grove itself, which is conveyed to the mind of the potential customer. The answer, appears to me, to be clearly in the negative. The monogram “BBC” in the respondents trade mark does not obliterate the bamboo grove displayed prominently above it.
6. In order to determine, whether the impugned mark is likely to deceive or cause confusion, the two marks have not to be compared placed side by side. The unwary customer is guided only by his general recollection of what he observes Having seen the appellants trade mark which admittedly gives him the impression of a bomboo grove, he is likely to be led away by the more or less similarly of the ‘bamboo grove’ in the respondents trade mark, on account of his recollection of the general impression formed earlier, into thinking that it is the same as that of the appellants. The customer, therefore, is likely to be deceived into thinking that the trade mark before him which may be of the respondent, i the same as that of the appellants, of which he is carrying just a general impression. This would cause the confusion, which the Act aims to avoid.
7. Under Section 11 of the Act a mark, which inter alia, by its use would be likely to deceive or cause confusion, cannot be registered as a trademark. Under Section 12(1) of the Act no trade make can be registered in respect of any goods, which is identical with or deceptively similar to trade mark which is already registered in the name of a different proprietor in respect of the same goods. Both sections 11 and 12(1), therefore, provide a bar to the registration of the respondent's trade mark.
8. The above conclusion appears to me to be so obvious and unavoidable, that it does not require looking into the many decided cases cited by Mr. Anoop Singh, the learned counsel for the appellants, to support it. But the facts in the case of Orange Grove Fruit Drink's Lilited's Appeal.1 are so strikingly on all fours with the facts in the instant case, that I cannot help but noticing it. In the Orange Grove case, the words ‘Orange Grove’ were accepted for registration in respect of orange cordials, as being distinctive. (Also see Harry Reynolds v. Laffeaty's Ltd. . 1958 RPC 387 and the “Pomril” case . 38 RPC 181.) Mr. Anand conteneded that the device of a bamboo has been disclaimed by the appellants. The registration of their trade mark was specifically made subject to the disclaimer, that it shall give no right to the exclusive use of the device of a bamboo. It was contended that under Section 28(2) of the Act, the exslusive right to the use of a trade mark given under sub-section (1) was subject to the limitations to which the registration was subject. The appellants, therefore, it was urged, could not raise objection to the said device being adopted by anyone else. The argument over looks the real nature of the disclaimer. The device of a bamboo may have disclaimed; buc not the device of a grove. A special representation in the shape of grove, may be of bamboo cannot, therefore, be said to have been disclaimed. This device has peculiarities of its own, which give it disnetiveness. It has came to be associated in the minds of the public and the trade, through long user, with the appellants goods. The disclaimer, subject to which the appellant's mark was registered, therefore, would not stand in their was of seeking protection for their device of a bamboo grove. The proviso to Section 17, under which a disclaimer is added, as was observed by the Supreme Court in Registrar of Trade Marks v. Ashok Chandra Rakhil Ltd. . AIR 1955 SC 558, preserves in tact any right which the proprietor may otherwise have under any other law herein relating to the mark or any part thereof.
9. I have, therefore, not been able to see any justification for dismissing the appellant's application for rectification. The impugnsJ trade mark belonging to the respondent was registered without sufficient cause and has wroagly remained on the register. I, therefore, accept the appeal, set aside the order of the Assistant Registrar of Trade Marks and allow the appellant's application for rectification under Section 56(2) of the Act, in the result, the entry in the register relating to the registered trade mark No. 185774 shall be varied by deleting the device of bamboo grove appearing in that mark. The respondent shall also pay the appellants costs of this appeal. Counsel fee Rs. 200 -.
10. Appeal allowed.
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