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Case Number

Original Petition No. 113/1987.

Attorney(S)

Mr. U.N.R Rao, Senior Counsel for C. Daniel, Sathya Rao for Petitioner.
Mr. B.T Seshadri, counsel for Respondent.

Judges

Jayasimha Babu, J.

Acts

clause (d) of sub-section (1) of Sec. 30

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Smart Summary

Summary of the Opinion

Factual and Procedural Background

The petitioner carried on a beedi-manufacturing business using the trade mark "Kubera Gajapathy Beedies" with a label showing a picture of Lord Ganesa and "No. 711" on either side. The respondent sued the petitioner in C.S. No. 97 of 1983, alleging infringement of the respondent's registered trade marks (Registration Nos. 6425, 6426, 113569 and 127573 in Class 34). The respondent's registrations include names such as "Mangalore Ganesh Beedies", "Ganesh Beedies", and a label featuring Lord Ganesh with "No. 501" on either side.

The respondent's trade marks were registered in 1942, have been renewed periodically, and remained valid at the time of the opinion. In the infringement suit the petitioner filed an affidavit in A. No. 5556/86 stating that he had "decided to discontinue my impugned mark" but reserved the right to "contest the relief for infringement" on the basis of a prohibition under Section 11. This petition under Section 56 (read with Sections 107 and 11(d)) was filed pursuant to that reservation.

Legal Issues Presented

Whether the petitioner is a "person aggrieved" within the meaning of Section 56 of the Trade Marks Act and thus entitled to maintain an application for rectification/cancellation of the respondent's registrations.
Whether the respondent's registered trade marks are invalid on the ground that they offend Section 11(d) of the Act (i.e., contain matter likely to hurt religious susceptibilities).
Whether the respondent's registered trade marks are disentitled to protection under Section 11(e) (for example, by incorporating the name of a well-known city such as "Mangalore").
Whether the petition should result in rectification of the Register by removing the word "Ganesh" and the pictorial representation of Lord Ganesh from the respondent's registrations.

Arguments of the Parties

Petitioner's Arguments

The use by the respondent of a pictorial representation of Lord Ganesa (and the name "Ganesh") on a commercial label injures the religious susceptibilities of the petitioner and, by extension, of Hindus generally; such use should not be allowed under Section 11(d).
The inclusion of the name of a well-known city ("Mangalore") in the registered mark renders the mark not entitled to protection, invoked under Section 11(e).
The petitioner preserved a right to contest the validity of the respondent's registrations by affidavit filed in the infringement suit and therefore brought this application under Section 56.

Respondent's Arguments

The respondent has valid registrations dating from 1942 that have been continuously used and renewed; no other person or class had objected to the registrations over the long period of use.
The petitioner had effectively discontinued use of the impugned mark and therefore was not a "person aggrieved" under Section 56; in any event, the petition lacks substance.
The inclusion of "Mangalore" in the registered mark is not prohibited by Section 11 and the Registrar did not object to it; Section 32 makes registration conclusive after seven years except in specified circumstances.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Powell v. Birmingham Vinegar Brewery (1894) AC 8	Explication of who is a "person aggrieved" — locus standi where applicant is in same trade and the registered mark on the Register would limit the legal rights of the applicant such that he could not lawfully do something he could lawfully do but for the registration.	The court applied this test to find that the petitioner was not a "person aggrieved" because he had discontinued use of the impugned mark and no legal right of his was prevented by the registration; thus the petition was not maintainable under Section 56.
National Bell Company v. Metal Goods Manufacturing Company, AIR 1971 SC 898	Construction of Clause (e) of Section 11 and interaction with Section 32: a mark being non-distinctive (and thus perhaps unregistrable under Section 9) does not automatically make it disentitled to court protection under Section 11(e); Section 32's conclusiveness after seven years applies unless the registration offends Section 11 on the date of commencement of proceedings or other specified exceptions apply.	The court relied on this reasoning to reject the petitioner's attempt to invoke Section 11(e) in respect of the inclusion of "Mangalore" (and to emphasize the strength of a long-standing registration under Section 32), observing that registration of a city name together with a name (e.g., "Mangalore Ganesh Beedies") is not prohibited by Section 11.

Court's Reasoning and Analysis

The court proceeded in two stages: first addressing maintainability under Section 56 (whether the petitioner was a "person aggrieved"), and second, considering the substantive merits under Section 11 (although the court noted the petitioner was not entitled to such consideration, it addressed them briefly).

1. Person aggrieved (maintainability):

The court applied the test from Powell v. Birmingham Vinegar Brewery: a person in the same trade is "aggrieved" only where the registered mark remaining on the Register would or might limit the applicant's legal rights so that by reason of the registration he could not lawfully do something which but for the registration he could lawfully do.
The petitioner had declared that he decided to discontinue the impugned mark and, according to the petition and submissions, was not using the label with Lord Ganesa. He had practically submitted himself to a decree in the infringement suit. The court found that no legal right of the petitioner was affected by the continuation of the respondent's mark on the Register and the petitioner did not intend to use the mark again.
Therefore, the petitioner was not a "person aggrieved" and the petition was not maintainable under Section 56.

2. Substantive considerations under Section 11 (considered briefly despite lack of maintainability):

Section 11(d) — religious susceptibilities: The petitioner asserted that the use of the image/name of Lord Ganesa offended religious susceptibilities, but produced no evidence. The court noted the respondent's long, uninterrupted use since 1942 (about 52 years) without complaints by any class or section, and the respondent produced lists of other registered marks incorporating names and images of deities, including Lord Ganesa and Lord Krishna.
The court observed that Central Government directions under Section 23(1) listing marks that cannot be registered did not include Lord Ganesa, indicating the Central Government did not treat such registration as per se objectionable. While those directions do not circumscribe Section 11, they are relevant to show that certain names/pictorials are not inherently disentitled to registration.
The court recognized policy concerns about use of religious symbols in marketing but stated that any broad prohibition should come from Parliament or, for new registrations, from the Central Government under Section 23.
On the facts, given the long period of use without objection, the court found the allegation of injury to religious susceptibilities to be uncredible and held no case was made under Section 11(d).
Section 11(e) — disentitled to protection: The petitioner argued that "Mangalore" being a well-known city made the mark disentitled to protection. The court noted that the petition did not seek deletion of the word "Mangalore" and that the Registrar had not considered inclusion of the city name to be objectionable. Citing Section 32 and National Bell, the court observed that a mark being non-distinctive does not automatically deprive it of protection after the statutory period, and registering a city name along with another word is not prohibited by Section 11.

3. Overall assessment:

Even if the petitioner had been a person aggrieved, the substantive grounds under Section 11(d) and 11(e) were not made out on the facts presented: no evidence supported the claim of hurt religious susceptibilities; long and continuous registration/use by the respondent without complaint militated against the petitioner's claim; Central Government directions did not consider Lord Ganesa per se objectionable; and the inclusion of "Mangalore" was not a prohibited feature of the mark.

Holding and Implications

Holding: The petition is DISMISSED.

Implications:

Direct effect: The respondent's registrations (including the mark(s) incorporating the name or image of Lord Ganesh and the name "Mangalore") remain on the Register; no rectification was ordered to remove "Ganesh" or the pictorial representation.
The court held that the petitioner was not a "person aggrieved" under Section 56 and therefore the petition was not maintainable. Even on merits, the petitioner's claims under Section 11(d) and 11(e) were rejected on the facts presented.
No broader change in legal principle was announced; the decision rests on application of established principles (including the test for "person aggrieved" and the effect of long-registration as per Section 32 and the interpretation in National Bell). The opinion does not purport to set a new precedent beyond these applications.

End of summary based exclusively on the provided opinion.

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A.T. Raja v. Mangalore Ganesh Beedi Works

This petition is a by a person who was carrying on a business in manufacturing of beedies under the Trade Mark “Kubera Gajapathy Beedies”. The label that was being used by the plaintiff had the picture of Lord Ganesa in the centre with ‘No. 711’ written on either side of the picture. Petitioner became a defendant in the suit filed by the respondent herein in C.S No. 97 of 1983 on the file of this Court. The suit was brought on the ground that the mark that was being used by the petitioner herein infringed the trade marks of the respondent herein, who are the registered owners of the trade marks bearing Nos. 6425, 6426, 113569 and 127573 in Class 34. The marks registered in their name includes the name Mangalore Ganesh Beedies, Ganesh Beedies as also the label with the picture of Lord Ganesh with No. 501 written on either side of the picture.

2. The trade marks in the name of the respondent were registered in the year 1942. It is not in dispute that those registered marks have been renewed from time to time and they are valid as on date. Respondent has been using these registered trade marks for over half a century.

3. The petitioner has filed an affidavit in that suit in A. No. 5556/86 wherein he has stated, inter alia, that he had “decided to discontinue my impugned mark. However, my right to contest the relief for infringement remains on the basis of the prohibition under Sec. 11 with respect to the registered trade marks of plaintiff”. This petition came to be filed pursuant to the right which he claimed to have reserved in the affidavit filed by him in that suit.

4. In this petition, the petitioner has invoked Sec. 56 of the Act read with Secs. 107 and 11(d) of the Act.

5. Sec. 56 of the Act empowers the court to cancel or vary the registration and to rectify the register. Clause 1 of S. 56 provides that

“on application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Court or Tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.”

6. Sec. 56(4) provides that the Tribunal or the High Court or the Registrar on its own motion, may after giving notice to the parties concerned and giving them an opportunity, make an order referred to in sub Sec. (1) of Sec. (2).

7. Sec. 107 of the Act provides that

“if in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant or where in any suit the defendant raises a defence under clause (d) of sub-section (1) of Sec. 30 if the plaintiff questions the validity of the registration of the trade mark, the issue as to the validity of the registration of the trade mark concerned shall be determined only on an application for the rectification of the Register and such application shall be made to the High Court and not to the Registrar.”

8. Sec 11 of the Act prohibits the registration of certain marks: It provides in Clause (d) and (e):—

“A mark…

“d”… which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

(e) which would otherwise be disentitled to protection in a court;

shall not be registered as a trade mark”.

9. The first question that arises for consideration is as to whether the petitioner is a “person aggrieved” and if he is not, whether he can maintain this petition. The petitioner has invoked the jurisdiction of the court on the ground that the suit has been filed against him alleging infringement of trade mark and in that suit the question has arisen as to whether the registration is valid. On his own showing, the petitioner has decided to discontinue the use of the infringing mark. Learned counsel for the petitioner submitted that petitioner is still engaged in manufacture of beedies but he is not using the label with the picture of Lord Ganesa. The petitioner has practically submitted himself to a decree in the suit filed by the respondent. No right of the petitioner is affected by continuance of the mark of the respondent on the Register. The petitioner does not have any intention of using that mark. The petitioner's business is in no way affected by the mark continuing to remain on the Register or its registration in the name of the respondent. The petitioner in the circumstances cannot be regarded as a person aggrieved for the purpose of Sec. 56 of the Act.

10. ‘Person aggrived’ was explained by Lord Herschell in Powell v. Birmingham Vinegar Brewey Company (1894) AC8. As that explanation lucidly brings out the relevant tests for determining the person who can be said to be aggrieved for the purpose of Sec. 56 of the Act, as well, the same is extracted and set out below:

“Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and where-ever the trade mark, if remaining on the Register, would or might limit the legal rights of the applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that which but for the existence of the mark upon the Register he could lawfully do, it appears to me he has a locus standi to be heard as person aggrieved.”

No legal right of the petitioner is affected and petitioner is not prevented from doing anything lawful by reason of the mark remaining on the Register. The petitioner not being a ‘person aggrieved’, this petition is not maintainable.

11. As elaborate arguments were addressed by the learned counsel for the petitioner, Mr. U.N.R Rao as also by the learned counsel for the respondent Mr. B.T Seshadri on the substantive questions raised under Sec. 11. I will briefly consider the same though the petitioner is not entitled to such consideration.

12. According to the petitioner, religious susceptibility of the petitioner and of the Hindus in general is affected by the use of Picture of Lord Ganesa on the label used by the respondent. The petitioner has not adduced any evidence in support of his assertion. He has merely asserted that Lord Ganesa is worshipped by all Hindus in general, and the object of such reverence and worship cannot be allowed to be used as commercial mark for enabling the user to make profits with the use of the image of the God.

13. While considering this contention, it is necessary to note the fact that the registered mark in this case was registered in the year 1942 and that during the course of these 52 years, no other person has questioned the validity of the registration on the ground that the religious susceptibilities of the Hindus are afffected by using the mark for commercial purpose. The petitioner's claim that his religious susceptibility had been injuriously affected by the use of the impugned mark as also the pictorial representation cannot be given much credence. It is not as if the petitioner alone belongs to the class or section who worship Lord Ganesa. Though the vast majority of the population in this country worship Lord Ganesa, none had objected to the use of the mark for over half a century. Moreover, Hinduism is generous and tolerant, and does not easily take offence at the pictorial representation of the Gods or Goddess who form part of the Hindu Pantheon. Respondent has produced a list of registered trade marks containing the names of Lord Ganesa as also a list of marks incorporating the name of Lord Krishna.

14. In the directions issued by the Central Government under S. 23(1) of the Act, setting out a list of marks which cannot be registered and which list includes Lord Budha, Sri, Ramakrishna, Sri Sarada Devi, the Sikh Gurus, Lord Venkateshwara, and Chatrapathi Shivaji, among others, Lord Ganesa is not mentioned. The Central Government is apparently of the view that registration of a mark containing the name or pictorial representation of Lord Ganesa is not par se objectionable.

15. The scope of S. 11(d) and 11(e) of the Act is of course not circumscribed by the directions of the Central Government to the Registrar under S. 23. Those directions are however, relevant to the extent of showing that use of names and marks not covered by such directions are per se not disentitled to registration.

16. The use of a name though in itself not objectionable, may become objectionable if it is used in relation to goods with which it would be objectionable to associate the name. Though smoking is now recognised as hazardous to health, smoking is not prohibited by the religious doctrines of the Hindus. The reason for that may well be that use of tobacco was discovered long after the founding of the Hindu religion. This is not to say that Hindu religion approves smoking.

17. While it may be eminently desirable to prohibit the use of religious symbols in relation to marketing of goods and services in a secular State, more so in a country where even the literacy rate is low and people tend to be easily swayed by appeals to religion, and the use of religious symbols can carry the erroneous message that the goods sold under that symbol carry with them a religious sanction or at the least non-disapproval of the use of such goods, such prohibition has to be imposed by Parliament and in so far as new registrations are concerned, by the Central Government by issuing suitable directions under Sec. 23.

18. The alleged hurt to the religious susceptibility of the petitioner is indeed a very tall claim and is wholly lacking any credibility. The petitioner had been using the very same name and pictorial representation of the very same Deity for the product similar to that of the respondent. It is only after the petitioner was injuncted from continuing to use that name and pictorial representation that the petitioner came up with this petition. On the facts and circumstances of the case, having regard to the long period of use by the respondent and the fact that no other person, section or class had complained of their religious susceptibility having been injured during this period, it must be held that no case is made out under S. 11(d) of the Act.

19. Learned senior counsel for the petitioner also invoked Sec. 11(e) of the Act to contend that the mark containing the name of a well known city like Mangalore, is not entitled to the protection of the court, as even according to the respondents, the beedies are manufactured in several other places besides Mangalore, and the head office of the respondent company is at Mysore. It is not open to the petitioner to raise this contention since the prayer in this petition is only that “entries in the Register in respect of the above mentioned Trade Marks bearing Registration Nos. 6425, 6426, 113569 and 127573 in Class-34 be rectified by the removal of the word “Ganesh” and the pictorial representation of the Hindu God Ganesh (a) and pass such further or other orders in the circumstances of the case”. There is no prayer for the deletion of the word “Mangalore” from the Registered Trade Mark. The argument now sought to be raised, does not find any basis in the petition. Even otherwise as rightly submitted by the learned counsel for the respondent, the registration of the mark “Mangalore Ganesh Beedies” is not a prohibited mark and does not offend any other law, and therefore it does not fall within the ambit of Sec. 11(e).

20. Learned counsel for the respondent invited my attention to Sec. 32 of the Act which reads as under:

“32. Registration to be conclusive as to validity after seven years:- Subject to the provisions of Sec. 35 and Sec. 46, in all legal proceedings relating to a trade mark registered in Part A of the Register (including applications under Sec. 56), the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved:—

a. that the original registration was obtained by fraud;

b. that the trade mark was registered in contravention of the provisions of Sec. 11 or offends against the provisions of that Section on the date of commencement of the proceedings;

c. that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor.

21. The scope of Sec. 11(e) has been considered by the Apex Court in the context of Sec. 32 of the Act in the case of National Bell Company v. Metal Goods Manufacturing Company (AIR 1971 SC 898). The Apex Court after considering various provisions of the Act held as follows:—

“The true construction of clause (e) of Sec. 11 is that even assuming that the trade marks in question were not distinctive and for that reason not registerable as not falling within Sec. 9, that fact by itself would not mean that they became disentitlyed to the protection in a Court. Therefore, the rule as to the conclusiveness of the validity of registration embodied in Sec. 32 applies even to those cases where if full facts had been ascertained at the time of the registration, that registration would not have been allowed provided of course that it does not offend against the provisions of Sec. 11 i.e, in addition to the matters in clauses (a) to (d) in Sec. 11, be disentitled to protection in a Court. Clause (e) of Sec. 11 deals with prohibition and not with requests of registration. Therefore, although a mark cannot be registered for instance, because it is not distinctive as provided by Sec. 9, such a mark is not for that reason only one, the registration of which is prohibited by Sec. 11”.

22. Mangalore is one of the cities where respondent manufactures its beedies. The owners hail from Mangalore. The Registrar did not consider the inclusion of the name of that city in the trade mark, to be objectionable. Registering a name along with the name of the City is not prohibited under Sec. 11. The petitioner does not seek rectification in so far as the name of the City is concerned. The invocation of Sec. 11(e) to remove the name of the city from the registered mark is wholly untenable and is devoid of merit.

23. The registration of the mark “Mangalore Ganesh Beedies” which includes the name of a well known city besides the name of Lord Ganesha is not prohibited by Sec. 11 of the Act, and it cannot be said to be disentitled to protection of court under Sec. 11(e) of the Act.

24. None of the grounds urged for the petitioner are tenable even if the petitioner were to be regarded as a person aggrieved and is entitled to maintain the petition under Sec. 56. Petition is therefore dismissed.

KA/RR/VCS

A.T. Raja v. Mangalore Ganesh Beedi Works

Summary of the Opinion

Factual and Procedural Background

Legal Issues Presented

Arguments of the Parties

Petitioner's Arguments

Respondent's Arguments

Table of Precedents Cited

Court's Reasoning and Analysis

Holding and Implications

A.T. Raja v. Mangalore Ganesh Beedi Works

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