Nakshatra Distilleries & Breweries Ltd. Vs Radico Khaitan Limited And Ors.

,

Manmohan Singh, J",

1. The Applicant has filed the above two petitions seeking cancellation of registration of the trade mark BRIHANS GOA labels bearing Registration,

Nos. 628446 and 629645, both in class 33 (hereinafter collectively referred to as ""the impugned registered trade mark"") and its removal from the",

Register of Trade Marks or in the alternative for imposing a disclaimer condition on registration of the impugned registered trade mark i.e., a condition",

that registration of the impugned registered trade mark shall give no right to the exclusive use of the word GOA.,

2. For easy references, the 1st Respondent i.e. the registered proprietor of the impugned registered trade mark, is hereinafter referred to as ""the",

Respondent"", while the 2nd Respondent is hereinafter referred to as ""the Registrar of Trade Marks"".",

3. The Applicant is in the business of manufacturing, distributing and selling alcoholic beverages. In or about January/February, 2015, who made",

applications to the Commissioner of State Excise, Maharashtra State for approval of its trade mark labels containing inter-alia the word GOA.",

3.1 The Respondent objected to the Applicant's said applications for approval of the said trade mark labels on the ground that the registered proprietor,

is the owner of the brand and label ""GOA"". Pursuant to the said objection the Commissioner of State Excise, Maharashtra State appointed a hearing in",

the said matter on 23rd April, 2015. Subsequently, vide his Order dated 28th April, 2015, the Commissioner of State Excise, Maharashtra State",

rejected the Respondent's objection and granted approval to the Applicant's trade mark labels.,

3.2 Subsequently, the Respondent by its Advocates notice dated 2nd May, 2015 called upon the Applicant to cease and desist from using the",

Applicant's trade mark labels which were duly approved by the Commissioner of State Excise, Maharashtra State inter alia on the ground that the",

Respondent is proprietor of inter alia of the impugned registered trade mark.,

3.3 Feeling illegal threats to the Applicant, the Applicant filed Civil Suit No. 2 of 2015 in the Court of District Judge Solapur at Solapur, inter alia",

seeking a declaration that the threats given by the Respondent are illegal and for an injunction restraining the Respondent from continuing to give such,

illegal threats. Pursuant to the application for interim reliefs filed by the Applicant under Order 39 Rules 1 and 2 of C.P.C. in the said Civil Suit No. 2,

of 2015, the District Judge Solapur at Solapur was pleased to pass an ex-parte order dated 16th May, 2015 granting ad-interim reliefs in favour of",

Applicant and against the Respondent. By the said order the Dist. Judge directed that the parties shall maintain status-quo as to the registered trade,

mark in question and non-inception of legal action and threat for alleged infringement of trade mark of the Respondent.,

3.4 In the meanwhile, the Respondent filed an Appeal from the said Order dated 16th May, 2015 to the Hon'ble Bombay High Court wherein by",

consent of both the parties said order of interim relief was modified vide order dated 23rd June, 2015 passed by the Hon'ble Bombay High Court in",

which the Respondent was given liberty to take legal action against the Applicant as per law, but before moving an application for ad-interim relief, the",

Respondent was to give 48 hours clear notice to the Applicant.,

3.5 Thereafter, the Respondent filed Civil Suit (OS) No. 1891 of 2015 against the Applicant and one Waterfield Spirits Pvt. Ltd. before the Hon'ble",

Delhi High Court seeking reliefs in terms of infringement of inter-alia its impugned registered trade mark and passing off. The Respondent also filed,

an application for seeking ad-interim/interim reliefs in the said suit. But no interim relief against the Applicant and the said Water field Spirits Pvt. Ltd.,

was granted. Subsequently, the Applicant filed an Application under Order VII Rule 11 for rejection of Plaint for want of territorial jurisdiction. Vide",

an Order dated 28th March, 2017, the Hon'ble Delhi High Court allowed the said Application under Order VII Rule 11 and rejected the Plaint for",

want of territorial jurisdiction. The appeal was filed by the respondent No. 1 where the operation of the order was stayed.,

3.6 It is not in dispute that in view thereof, the Applicant was the person aggrieved and hence on 27th June, 2015 filed the above rectification",

applications.,

4. The impugned registered trade mark are label marks containing the word GOA which is one of the feature of the label apart from other features,

subsisting on the label. Representation of the impugned registered trade marks are reproduced hereinbelow:,

5. The Application states that the word GOA is not a coined or invented word but the same is the name of a stage on the west coast of India. The,

word GOA is defined in the New Oxford Dictionary of English (Clarendon Press Oxford, 1999) as follows:",

Goa: a state on the west coast of India; capital, Panaji. Formerly a Portuguese territory, it was seized by India in 1961. It formed a Union Territory",

with Daman and Diu until 1987, when it was made a state.""",

5.1 The Applicant case is that ""Goa"" is not just the name of any other Indian state GOA is an extremely popular tourist destination not just amongst the",

Indians but also amongst the travellers across the globe. Goa is well-known for its beaches, coconut trees and sun. Both domestic and international",

travellers frequently visit GOA. Between the year 1985 and March, 2015 more than 5 crore tourists arrived in GOA which speaks volumes of",

popularity of GOA. GOA boasts of two world heritage sites viz. Bom Jesus Basilica which contains the tomb of St. Francis Xavier and Churches and,

Convents of old GOA. The international well-known magazine National Geographic Traveler"" has placed GOA as one of the top 99 costal destinations",

of the world. The very same magazine has placed GOA amongst top 10 nightlife cities of the world. Another international well-knows publication,

Lonely Planet"" has for the year 2014 chosen GOA to be the best Indian Destination for Relaxation. For the year 2013 the said publication had",

honored GOA with 'Best Value Destination',

5.2 The Applicant submits that the word GOA is not just a geographical name but is an extremely famous tourist destination. The Application submits,

that in view of the above, the word GOA is inherently incapable of distinguishing the goods/services of one trader from those of other. The Applicant",

also submits that the said inherent incapability is such that regardless of goods or services in relation to which the word GOA is used and regardless of,

the duration for which it is used, the word GOA can never in law become capable of distinguishing goods/services of one trader from those of others.",

5.3. The Applicant states that consumption of alcoholic beverages in GOA is high. GOA State Excise website shows that in the year 2011-2012, GOA",

Government earned Excise duty of Rs. 18,234.43 lakhs. GOA has more than 50 distilleries. The Applicant has filed extracts from website of GOA",

State Excise giving the details of the revenue, names and address as of the distilleries in GOA and consumption of alcohol in GOA. As per 'Price of",

Travel' website lists, GOA is one of the cheapest places for alcohol loving travelers.",

5.4. Feni is a well-known local alcoholic beverage of GOA. It is made from cashew and coconut. 'Feni is registered as a geographical indication under,

the Geographical Indication of Goods (Registration and Protection) Act under No. 120 in Class 33 as of 19th December, 2007. The members of the",

trade and public connect GOA with its locally brewed alcoholic beverage ""Feni'. Goa is known for its alcoholic beverages.",

5.5. Thus, ""GOA""/impugned registered trademark is inherently unsuitable for being registered as a trade mark. ""GOA""/impugned registered trade mark",

cannot serve the function of indicating to the members of the trade and the public origin of the goods/services. It lacks inherent distinctiveness and,

inherent capacity to distinguish one's goods from those of others. ""GOA"" is a purely geographical word in its ordinary signification and no amount of",

user can overcome the said negative quality of the said word/impugned registered trade mark. There is no sufficient distinguishing characteristic in the,

impugned registered trade mark and therefore no distinctiveness could be expected to result in respect of the impugned registered trade mark.,

5.6. The registration of the impugned registered trade mark embarrasses and causes inconvenience to other manufacturers and/or traders of alcoholic,

beverages, now and would continue to do so in future. ""GOA""/impugned registered trade mark must be kept open to the trade and no monopoly in",

respect thereof can be conferred upon the registered proprietor.,

5.7. If alcoholic beverages not manufactured in GOA are sold under the impugned registered trade mark then the impugned registered trade mark,

would mislead the traders and consumers and would deceive them to believe that the goods bearing the impugned registered trade mark originate from,

GOA. However, if the alcoholic beverages manufactured in GOA are sold under the impugned registered trade mark then it would describe to the",

traders and consumers that the goods in question are manufactured in GOA. Therefore, it is prohibited from registration by granting exclusive right to",

one party.,

6. It was stated that the impugned registered trade mark was registered subject to association with trade mark No. 333903. The registered proprietor,

claims to be Assignee of the impugned registered trade mark by virtue of Deed of Assignment dated 5th October, 2005. However, the trade mark No.",

333903 was not assigned to the registered proprietor vide the said Deed of Assignment dated 5th October, 2005. There is no effective, valid and legal",

transfer of the impugned registered trade mark by its erstwhile owner to and in favour of the registered proprietor. The Registrar of Trade Marks,

should not have entered the name of the registered proprietor as the subsequent proprietor of the impugned registered trade mark.,

7. The Applicant says that there is no other meaning, definition or connotation of the word GOA, save and except the name of State on the west coast",

of India. The Applicant submits that the word GOA is undoubtedly a geographical name.,

8. The impugned registered trade mark contains the name of one of the Indian States ""GOA"" as its leading, essential, prominent and memorable",

feature. A cursory look at the impugned registered trade mark shows that ""GOA"" is the only prominent and memorable feature of the impugned",

registered trade mark and all other features of the impugned registered trade mark indicate or designate some characteristics of the goods for which,

the impugned registered trade mark has been registered.,

8.1. GOA, the only prominent and memorable part of the impugned registered trade mark, is the name of one of the States of India (formerly Union",

territory of India). It is popular for its beaches, coconut trees and sun and attract large number of domestic and international tourists. It is one of the",

most popular State of India.,

GOA has large number of manufactures of alcoholic beverages, wines, liquors etc. GOA's locally manufactured alcoholic beverage known as ""FENI""",

is well-known and popular. The per capita consumption of alcoholic beverages in GOA is quite high. GOA and Alcoholic beverages therefore go,

together.,

The impugned trade mark and essential, leading, prominent and memorable part thereof viz. GOA lacks positive quality of distinguishing one's goods",

(goods of the Registered Proprietor) from those of others. In fact it has a negative quality of indicating that the goods bearing the impugned registered,

trade mark are manufactured in GOA.,

8.2. The impugned registered trade mark containing GOA as its leading, essential, prominent and memorable feature cannot be allowed to be",

monopolized by the impugned registered trade mark. The impugned registered trade mark and especially the word GOA contained therein can only,

designate a Section of the country or the State of India and is incapable of indicating to the members of the trade and public, origin of goods.",

8.3 The impugned registered trade mark and especially the word GOA contained therein is not such as it would never occur to any other trader in,

such goods to use, especially since it is a very popular tourist State with high consumption of alcoholic beverages and large number of manufacturers",

of alcoholic beverages are located in the State of Goa.,

The impugned registered trade mark and especially GOA contained there in will always be used and understood in its geographical signification and,

can never become distinctive of the goods of the registered proprietor.,

8.4 The registered proprietor is not entitled to a monopoly over the word GOA, which is the name of the popular State of India and the registered",

proprietor cannot claim monopoly in GOA by claiming registration of the impugned registered trademark especially since Goa is the seat of,

manufacture of alcoholic beverages.,

9. The applicant submits that in the facts and circumstances of the case, the registration of the impugned registered trade mark should be cancelled",

and an entry relating thereto should be removed from the Register. In any event of the matter, alternatively, since GOA is the name of the popular",

State of India, assuming while disputing the registered proprietor's claim of registrability of the impugned registered trade mark as a whole, it is",

necessary to impose a condition of disclaimer i.e. a condition that by virtue of registration of the registered trade mark, the registered proprietor would",

not claim exclusive right to the use of the word GOA.,

Case of the Respondent No. 1 as per counter-statement,

10. The respondent No. 1 has filed the counter statement in both petitions wherein it was stated that the applicant has in a mala fide manner and with,

a dishonest intention copied the Registered Trade Mark of the Respondent No. 1 for an identical product i.e. alcoholic. beverages, and is using the",

same without any regard to the letter and spirit of the law. The mala fides of the Applicant is also evident from the fact that The Applicant is,

promoting their alcoholic beverages bearing the mark 'GOA' as 'ORIGINAL GOA' despite being fully aware of the fact that the Respondent No. 1 is,

the prior user of the mark 'GOA'. The Applicant has no have provided no explanation as to why it has adopted the mark 'GOA' and 'G04' for alcoholic,

beverages.,

10.1 It is submitted that the Applicant cannot be allowed to Approbate and Reprobate at the same time. It is submitted that the Applicant have entered,

into a trade mark user Agreement with an entity called Water field Spirits Pvt. Ltd. and have recognized the proprietary rights in the label comprising,

the word 'GOA'. The said entity has also applied for trade mark registration of a label comprising the word 'GOA' bearing application No. 1934928.,

Thus, when the Applicant themselves applied have recognized rights in label comprising the word 'GOA', therefore, there is mala fide on their part to",

contend that the mark 'GOA' is descriptive/generic.,

It is stated by the respondent No. 1 that the registrations of the registered Trademark No. 629645 and 628446 in Class 33 are valid and their entry in,

the register is made with a sufficient cause.,

Counter-statement,

11. It is stated by the Respondent No. 1 that it which was formerly known as Rampur Distillery was established in the year 1943. In the year 1999,",

the Respondent launched its brands under the house mark/trademark RADTCO which was met with phenomenal success. Some of the well-known,

trademarks of the Respondent No. 1 are 8 PM, 8 PM BERMUDA RUM, CONTESSA, OLD ADMIRAL, GOA etc.",

11.1. The Respondent No. 1 also has 14 state-of-the-art bottling lines, with a few imported from Italy. It is also equipped with tunnel bottle washing,",

filling, sealing and labeling machines having capacity of producing 1500 cases of liquor in a single shift of operation. To keep pace with the growing",

demand, the Respondent No. 1 has significantly increased its bottling capacity by both acquiring and setting up bottling plants in the states. of",

Rajasthan, Uttaranchal and Andhra Pradesh.",

11.2. The Respondent No. I also has four millionaire brands - 8 PM Whisky, Contessa Rum, Old Admiral Brandy and Magic Moments Vodka, selling",

more than a million cases per annum. The Respondent No. 1 has a strong presence in the CSD market, serving the Indian Armed Forces. The",

Respondent No. 1 also sells rectified spirits in bulk liquid form to other Indian Made Foreign Liquor (IMFL) manufacturers in India and overseas. The,

Respondent No. I thus has brands that attract consumers of every market segment both in terms of purchasing power and preference.,

11.3. One of such brands of Respondent No. 1 is called ""GOA"". In the year 2005, the Respondent No. I entered into an assignment deed dated 5th",

October, 2005 with Brihan Maharashtra Sugar Syndicate Limited and that assignment deed inter alia, acquired the trademark Brihan's ""GOA"" (Label),",

'GOA"" Special Dry Gin (Label) as well as ""GOA"" Dry Gin and Lime .35 UP in Class 33 for alcoholic beverages along with its goodwill. The",

registered trade mark ""GOA"" Special Dry Gin (Label) is the subject matter of the present petition. By virtue of the said assignment deed the",

Respondent No. I became the proprietor of the trademark ""GOA"" Special Dry Gin (Label) in respect of Alcoholic Beverages, whose essential and",

prominent feature is the mark 'GOA'. The Respondent No. 1 has also applied for registration of the trademark 'GOA' word per se. in Class 33 for,

Gin. Therefore, the Respondent No. 1 can claim exclusive rights on the use of the word mark ""GOA"" in terms of Section 17 of the Trade Marks Act,",

1999. Further, the trademark ""GOA"" being an arbitrary mark for alcoholic beverages merits the highest degree of protection under the Trademarks",

Act, 1999.",

11.4. The impugned mark and the word ""GOA"" were first adopted by the Respondent No. 1's predecessor in interest at least in the year 1994 and was",

used by them continuously and uninterruptedly till the mark was assigned to the Respondent No. 1 in 2005. Thereafter, the Respondent No. 1 has used",

the essential feature of the said label, i.e. ""GOA"" in respect of alcoholic beverages, continuously since then and has been using the said mark",

uninterruptedly till date. Although advertisement of alcoholic beverages is not allowed the Respondent No. 1 has also independently and through its,

predecessor in interest promoted their alcoholic beverages particularly Gin under the mark ""GOA"" throughout the country. Products bearing the",

trademark ""GOA"" have met with unprecedented success due to excellent product activity, superior packaging and high recall promotion activities and",

is currently one of the fastest growing products in the Respondent No. 1's portfolio. This is evident from the volume of cases and sales figures or the,

products sold under the trademark ""GOA"" as tabulated below:",

Therefore by virtue of such long, continuous and uninterrupted use, excellent quality and extensive promotion the trademark ""GOA"" has come to be",

associated exclusively with the Respondent No. 1 in respect of alcoholic beverages. Therefore, the Respondent No. 1 has common law rights, over",

and above the statutory rights, in the trade mark ""GOA"":",

12. It is averred that the trademark ""GOA"" has thus come to be inexorably linked to the products of the Respondent No. 1 through prior registration",

being an essential feature of the Respondent No. 1's registered trademark and prior adoption in the year 1994, continuous user since then and the wide",

spread promotion and publicity. Consumers associate goods bearing the trademark ""GOA"" exclusively with those of the Respondent No. 1.",

Therefore any use by any third party of the said trademark 'GOA' or any other deceptively similar mark would constitute infringement of the,

Respondent No. 1's statutory rights as well as passing off. Further the Respondent No. 1 is' very vigilant about protecting its Intellectual Property and,

particularly in respect of the mark ""GOA"" and therefore regularly investigates the markets of India to find any infringing entities selling or",

manufacturing their products under the said names. The Respondent No. 1 has instituted multiple legal proceedings to protect its mark 'GOA'. The,

details of the same are as follows:,

• Radico Khaitan Ltd. v. Vishnu Laxmi Co-Operative Grape Distilleries Ltd.; CS(OS) No. 2925 of 2011 before the Hon'ble High Court of Delhi at,

New Delhi;,

• Radico Khaitan Ltd. v. Master Blenders Pvt. Ltd.; CS(OS) No. 957 of 2012 before the Hon'ble High Court of Delhi at New Delhi;,

• Radico Khaitan Ltd. v. M/s. Brima Sagar Maharashtra Distilleries Ltd. CS(OS) No. 1572 of 2013 before the Hon'ble High Court of Delhi at New,

Delhi.,

• Radico Khaitan Ltd. v. Delta Distilleries Pvt. Ltd.; CS(OS) No. (sic) 2014 before the Hon'ble High Court of Delhi at New Delhi;,

• Radico Khaitan Ltd. v. Pradip Dunichand Kalani & Ors.; Cont.CAS(C) No. 641 of 2015 before Ltd. v. Nakshatra Distilleries & Breweries Ltd.;,

CS(OS) No. 1891 of 2015 before the Hon'ble High Court of Delhi at New Delhi.,

It is submitted that in Radico Khaitan Ltd. v. Vishnu Laxmi Co-Operative Grape Distilleries Ltd.; CS(OS) No. 2925 of 2011, the Respondent No. 1",

had obtained an ex-parte order against the Defendant, which was later confirmed by the Hon'ble High Court of Delhi. The said case is pending and is",

at the stage of trial. In, Radico Khaitan Ltd. v. Master Blenders Pvt. Ltd. and Deejay Distilleries Pvt. Ltd.; CS(OS) No. 957 of 2012 the Respondent",

No. 1 entered into a mediation agreement with the Defendants whereby they acknowledged the right of the respondent No. 1 in the trade mark,

GOA"" and undertook not to use the trade mark 'GOA' in future. It is stated' that the said suit has been decreed in terms of the said undertaking. In,",

Radico Khaitan Ltd. v. Delta Distilleries Pvt. Ltd.; CS(OS) No. 2757 of 2014. the Defendants also undertook not to use the trade mark 'GOA' in,

future. The said suit has also been decreed in terms of the said undertaking.,

12.1. In Radico Khaitan Ltd. v. M/s. Brima Sagar Maharashtra Distilleries Ltd.; CS(OS) No. 1572 of 2013. The said matter has been settled and,

Brima Sagar Maharashtra Distilleries Ltd. have undertaken not to use the word 'GOA' after 30th September, 2015. The Defendant in those",

proceedings has acknowledged the rights of the Respondent No. 1 in the mark GOA and has undertaken not to use the mark GOA in any manner and,

the suit has been decreed. In Radico Khaitan Ltd. v. Brima Sagar Maharashtra Distilleries Ltd.; CS(OS) No. 1572 of 2013 Delhi High Court had,

passed an interim order dated 15th October, 2014 wherein it was observed ""the word 'GOA' per se may not be capable of protection as a trademark"".",

In this regard, it is submitted that the Hon'ble Division Bench of the Delhi High Court declared the said observation would not be binding on the",

Respondent No. 1 for the reason that it is not a determinative finding of law vide its order dated 13th January, 2016.",

12.2. In Radico Khaitan Ltd. v. Pradip Dunichand Kalani & Ors. vide interim order dated 17th August, 2015; the Respondents therein have been",

restrained from using adopting, operating, marketing, offering for sale, advertising or in any manner dealing with the trademarks of the Respondent No.",

1 including the mark ""GOA"", ""GOA LABEL"" and/or any other mark which is identical or deceptively similar thereto including but not limited to the ""G",

& A"" Label arid the ""GOVA"" Label. The said interim order continues till date. It is submitted that in all the ex-parte orders or consent decree,",

settlement etc. the Respondent No. 1 has been able to secure rights in, the word' GOA' per se.",

12.3. Radico Khaitan Ltd. v. Nakshatra Distilleries & Breweries Ltd.; CS (OS) No. 1891 of 2015 before the Hon'ble High Court of Delhi at New,

Delhi has been filed against the Applicant seeking to restrain the Applicant from using the mark 'GOA' for alcoholic beverages and Other incidental,

reliefs, The said. suit is pending before the Hon'ble High Court of Delhi.",

12.4. The Respondent No. 1 has also taken actions against entities which have filed applications for similar marks comprising the word 'GOA'. The,

details of the same are as follows:,

Other than the above, the Respondent No. 1 has also filed applications under Form TM-58 of the Trade Marks Act, 1999 seeking to have information",

of particulars of advertisement of a mark bearing the word 'GOA' in Classes 32 and 33.,

13. In nut-shell, it is stated that on the basis of the above, it is submitted that the mark 'GOA' has come to be associated with the Respondent No. 1",

and the present petition of the Applicant is liable to he dismissed as the Applicant is a dishonest adopter of the mark 'GOA', of which the Respondent",

No. 1 is a prior registrant and user for alcoholic beverages.,

The' registration of the registered trade mark was made in compliance of the provisions of the Trade Marks Act and in particular the provisions,

contained in Sections 9, 11 and 18 of the Act and even today the registration of the said trademark Continues to be consistent with the provision of the",

Trade marks Act, 1999.",

14. It is submitted that it is a well settled principle of law that a mark is capable of being protected as a trade mark despite being a geographical word,

if the use is arbitrary to the goods in question. Without prejudice to the above it is further submitted that a geographical mark can acquire trademark,

significance upon acquiring secondary meaning. It is submitted that the mark 'GOA' is completely arbitrary to the goods in question and is therefore a,

trademark requiring the highest degree of protection. The trademark 'GOA' of the Respondent No. 1 has acquired immense goodwill and reputation in,

the market due to continuous and uninterrupted sales of its product for around 22 years, the great quality of the product, substantial sales and",

availability in most parts of India giving the mark an extensive geographical reach. Further the Respondent No. 1 is extremely active in protecting its,

mark and has successfully taken actions and obtained injunctions against several third parties misusing the mark.,

15. The Respondent No. 1 submits that Feni is registered as a geographical indication under the Geographical Indication of Goods (Registration and,

Protection) Act, 1999. It is submitted that a Geographical Indication is different from a Geographical Trade Mark. It is submitted that the contentions",

raised herein are a desperate attempt by the Applicant to confuse this Hon'ble Tribunal. A Geographical Indication is an indication towards the effect,

that the product to which it is applied is produced at a particular ""region and because of that production and development at that particular region the",

product is distinguishable from other products, The advantage of the same is for a class of manufacturers who manufacture that product in that area!",

On the other hand, a geographical trade-Mark is a trade mark which may have an original geographical significance however is applied to products in",

an arbitrary manner or has acquired a distinct secondary meaning. It is for this reason, GOA cannot be a trade mark for 'Feni' as there is a bar under",

Section 9(1)(b) of the Trade Marks Act. 1999 for places indicating geographical origin. What has to be seen is whether the trademark is the name of,

the place from which the goods actually come and whether the place or region named is noted for these particular goods for the bar in Section 9(1)(b),

to operate. 'Gin is not associated with Goa and Goa is famous for 'Feni' and not 'Gin'. In the present case. 'GOA' has nothing to do with 'Gin'.,

Therefore, the mark of the Respondent No. 1 is an arbitrary trade mark. Therefore, the contentions of the Applicant in the paragraph under reply",

wrong and denied. It is vehemently denied that 'GOA' is known for its alcoholic beverages.,

16. It is denied that in the aforesaid facts and circumstances, 'GOA'/impugned registered trade mark is inherently unsuitable for being registered as a",

trade mark. It is submitted that the Applicant has raised untenable grounds which are devoid of any merit and are a desperate attempt by the,

Applicant to skirt the issue at hand. It is denied that 'GOA' the impugned registered mark cannot serve the function of indicating to the members of the,

trade and the public origin of the goods/services. It is denied that the mark 'GOA' lacks inherent distinctiveness and inherent capacity to distinguish,

one's goods' from those of others. It is submitted that a mark has to be tested in relation to the goods in question. It is a well settled principle of law,

that geographical trademarks if used in an arbitrary manner are inherently distinctive and even if a geographical term is descriptive it is capable of,

protection as a trademark on acquiring secondary meaning. In the present case, Respondent No. 1's 'mark 'GOA' is being used in an arbitrary sense",

for Gin. Therefore, an arbitrary use of a geographical mark makes the mark inherently distinctive. Without prejudice to the said contention, it is",

submitted that due to a continuous, prior and extensive use of the mark 'GOA' for more than two decades, the mark 'GOA' has come to be associated",

with the Respondent No. 1. Therefore, the contentions of the Applicant as to the lack of distinctiveness of the mark of the Respondent No. 1 is neither",

tenable in law or in fact. Therefore, the Contention of the Applicant that no amount of user can overcome the said negative quality of the said",

word/impugned registered trade is wrong and vehemently denied. It is vehemently denied that there is no sufficiently distinguishing characteristic in the,

impugned registered trade mark and therefore no distinctiveness could be expected to result in respect of the impugned registered trade mark.,

17. It is denied that, the registration of the impugned registered trade mark embarrasses and causes inconvenience to other manufacturers and/or",

traders of alcoholic beverages, now and would continue to do so in future. It is submitted that the Applicant has no meritorious contentions in facts and",

in law and are raising unreasonable and untenable arguments. It is stated that no grievance would be caused to any manufacturer who honestly wants,

to practice his trade by registration of the Respondent No. 1's trademark. It is only, the parties such as the Applicant who want to trade upon the",

reputation and goodwill of the Respondent No. 1's mark would be inconvenienced by the said registration as tie prevailing registration prohibits them,

from using the mark 'GOA'. It is submitted that there are multiple marks available for adoption and there is no honest reason why the Applicant has,

adopted the mark 'GOA'. However, the Applicant intentionally chose to capitalise on the brand value of the Respondent No. 1's mark. It is vehemently",

denied that the 'GOA'/impugned registered trade mark must be kept open to the trade and no monopoly in respect thereof can be conferred upon the,

registered proprietor.,

18. It is submitted by the respondent No. 1 that neither the Respondent No. 1, nor the Applicant manufactures its products in Goa. None of the",

contesting parties in the present case has connection with Goa. Therefore, the question and assumption that the alcoholic beverage will be",

manufactured by Respondent No. 1 in GOA is highly untenable. It is submitted that the parties are using the mark GOA in a purely trademark sense,

and not as a geographical descriptor. Additionally, GOA is not known for Gin, therefore it is very unlikely for consumers to associate the mark in a",

geographical sense. In light of the same it is submitted that the impugned registered trade mark will never describe to the traders and consumers that,

the goods in question are manufactured in GOA. Thus, the contention of the Applicant that the impugned registered trade mark would describe to the",

consumers that the goods in question are manufactured in GOA is untenable and therefore denied. Secondly, just because a mark is a word of",

geographical nature and has been applied to a particular product in an arbitrary sense, it cannot be assumed that the traders and consumers would be",

deceived to believe that the Goods originate from that place. It is a well settled principle of law that if the place or region is not noted for the particular,

goods in question then the mark is an arbitrary mark. It is clear that the contentions of the Applicant are merely a figment of its imagination. The,

Applicant is raising untenable contentions having no credence in fact or in law. Thus, it is denied that the impugned registered trade mark is prohibited",

from registration for any reason. Without prejudice to the above, it is submitted that it is the Applicant's own case that use of 'GOA' for products not",

made in GOA will mislead the traders and consumers that the goods originate from 'GOA'. In this regard, it is submitted that the Applicant cannot be",

allowed to approbate and reprobate at the same time. Without prejudice to the above, it is humbly submitted that the trademark GOA of the",

Respondent No. 1 has acquired a secondary meaning for Gin due to continuous and uninterrupted sales of its product for more than 22 years, the great",

quality of the product, substantial sales and availability in most parts of India giving the mark an extensive geographical reach.",

19. It is submitted that the records of the Trademark Registry wrongly reflect that the Respondent No. 1's registered trademark is Associated with,

trademark No. 333903, which number does not exist on the trademarks register. However, this fact does not make the Assignment of the mark invalid",

as it is clearly an error of the Registry. Further, as per Clause 1.1 of the Agreement the entire right title and interest in the trademarks GOA including",

common law rights in the said mark were assigned to the Respondent No. 1, therefore, this fact is irrelevant to the facts of the present case. It is",

denied that there is no effective, valid and legal transfer of the impugned registered trade mark by its erstwhile owner to and in favour of the",

Respondent No. 1.,

20. It is denied by the Respondent No. 1 that it has not used the registered mark as whole and in its form as registered, especially during a period of 5",

years and 3 months prior to the date hereof. It is denied that the registration of the impugned registered trade mark is liable to be cancelled under,

Section 47 of the Act for any reason. It is denied that the Respondent No. 1 did not have and does not have a bona fide intention to use the impugned,

registered trade mark. It is submitted that the Respondent No. 1 has been continuously and uninterruptedly using the essential and prominent features,

of its registered trademark at least since 1994 through its predecessor in interest and since 2005 directly. It is also denied that the Applicant is entitled,

to the reliefs sought in the present application.,

Applicant's Response to the Counter statement,

21. The applicant has filed the affidavit of Mr. Suresh Ramhari Margar in Reply to the counter statement on 23/08/2017 along with Annexure A-1 to,

D.,

22. With reference to Respondent No. 1's contention, Applicant has entered into a user agreement with Water Filed Spirits Pvt. Ltd. and has",

recognized proprietary rights in the label comprising the word ""GOA"", it was submitted that Respondent No. 1 is trying to mislead this Tribunal. It is",

submitted that a cursory look at the said label reveals that the word ""LEMONCE"" and the device of bird are the leading, essential and prominent",

features of the said label and the word ""GOA"" has been used in smaller font and in a descriptive sense. With reference to Respondent No. 1's",

contention that the said Water Field Spirits Pvt. Ltd. has filed an application for registration of the trade mark label containing the word ""GOA"" under",

No. 1934928, It is submitted that Respondent No. 1 has conveniently failed to disclose material facts pertaining to the said Application. It is submitted",

that in particular the Respondent No. 1 failed to mention that in its reply to examination report dated 16th August, 2012, the said Waterfield Spirits Pvt.",

Ltd. had stated that ""In view of the geographical significance of the word ""GOA"" Applicants are agreeable to the condition that they shall have no",

right to the exclusive use of the word, except as substantially shown in the form of the application."" Pursuant thereto, the trade mark under the said",

application was advertised in the Trade Marks Journal No. 1595 dated 1st July, 2013 at Page 1156 with a disclaimer that registration of the trade mark",

shall give no right to the exclusive use of the word GOA.,

23. With reference to paragraph 5 of Preliminary Objections of the Counter-Statement, it was denied by the applicant that the present petition is liable",

to be dismissed or that the same is filed in disregard of the alleged principle of protection of geographical trade marks as alleged. It is submitted that it,

is a settled principle of trade marks law that the trade marks which designate the geographical origin of the goods are not registrable. It was stated,

that geographical trade mark when applied arbitrarily to any goods or services, the same merits any protection much less highest degree of protection",

as alleged or at all. It is submitted that in any event, the word GOA in the impugned trade mark has not been used in arbitrary or fanciful way to",

UK Trade Marks Act, 1938 (Old Law)","UK Trade Marks Act, 1994 (Current Law)

,

,

Section 9: Distinctiveness requisite for registration in

Part A

(1) In order for a trade mark (other than a

certification trade mark) to be registrable in Part A

of the registrar, it must contain or consist of at least

one of the following essential particulars:-

(a)......

(b)......

(c)......

(d) a word of 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.

(e) any other distinctive mark, but a name, signature,

or word or words, other than such as fall within the

descriptions in the foregoing paragraphs (a), (b), (c)

and (d), shall not be registrable under the provisions

of this paragraph except upon evidence of its

distinctiveness.","Section 3: Absolute grounds for refusal of registration.

(1) The following shall not be registered

(a)......

(b)......

(c) Trade marks which consist exclusively of signs or indications which may serve, in trade, to

designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of

production of goods or of rendering of services, or other characteristics of goods or services.

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d)

above if, before the date of application for registration, it has in fact acquired a distinctive

character as a result of the use made of it.

Trade Marks and Merchandise Marks Act, 1958

(Old Law)","Trade Marks Act, 1999 (Current Law)

Section 9: Requisites for registration in Part A and B

of the Registrar.

(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.

(e).......

(2) A name, signature or word, other than such as

fall within the descriptions in clauses (a), (b), (c) and

(d) of sub-section (1) shall not be registrable in Part-

A of the register except upon evidence of its

distinctiveness.","Section 9: Absolute grounds for refusal of registration.

(1) The trade marks

(a).....

(b) which consist exclusively of marks or indications which may serve in trade to designate the

kind, quality, quantity, intended purpose, values, geographical origin or the time of production of

the goods or of rendering of service or other characteristics of the goods or services; Shall not

be registered

Provided that, a trade mark shall not be refused registration if, before the date of application for

registration it has acquired a distinctive character as a result of the use made of it or is a well-

known trade mark.

UK Trade Marks Act, 1994","Trade Marks Act, 1999

Section 3: Absolute grounds for

refusal of registration

(1) The following shall not be

registered

(b) trade marks winch are devoid or

any distinctive character,","Section 9: Absolute grounds for refusal of registration:-

(1) The trade marks-

(a) Which are devoid of any distinctive character, that

is to say, not capable of distinguishing the goods or

services of one person from those of another person:

be maintained under Section 32 of the 1999 Act, if it is shown that the subject registrations have also acquired a distinctive character in relation to the",

goods or services for which the registration is granted.,

Further, the subject registrations cannot be rectified on the ground that there, was no user on the date when the applications were filed. Further, the",

subject registrations have also acquired a secondary meaning after extensive use for the past 24 years. Therefore, the subject registrations have also",

acquired a distinctive character in relation to GIN.,

32. Arguments of the Applicant,

The Applicant submits that the word GOA is inherently incapable of registration. The word GOA is not a name of an insignificant or unimportant,

geographical area of which people have never heard of or of which people would never relate the impugned goods to be originating from Goa is an,

extremely popular tourist destination, attracting tourist not just from within India but from different parts of the world. There would hardly be anyone",

who has not heard of or is not aware of the popularity of GOA as a tourist place. Any reference to the word GOA immediately and unquestionably,

leads one to think of State of Goa. In such circumstances, it can never be suggested, as is falsely suggested by the Respondent herein, that the word",

GOA has acquired a secondary meaning denoting the Respondent's impugned goods bearing the impugned trade mark. The word GOA can never,

shun its inherent descriptiveness and can never be capable in law of distinguishing goods of the Respondent from those of others.,

33. In the Matter of Applications by the Liverpool Electric Cable Company Limited to register Trade Mark 1929 (46) RPC 99. In the facts of the said,

case, the Applicant used the trade mark ""Liverpool Cables"" in relation to electric cables for a period of 26 years before making application for its",

registration in relation to the said goods. However, despite the said user, the Registrar of Trade Marks held that the word ""Liverpool"" is not prima",

facie capable of distinguishing Applicant's cables or of becoming distinctive of them; that Liverpool was one of a class of geographical names which,

were of such importance that the name ought not to be registered to any one trader; that the word ""Liverpool"" describes the common characteristic of",

vast quantities of goods, namely that they come from Liverpool; and that the phrase ""Liverpool Cables"" meant, not the cables of the Applicant",

Company, but cables manufactured or dealt in at Liverpool. In the appeal filed by the Applicant, Mr. Justice Romer reversed the Ld. Registrar's",

judgment while holding that (i) the Applicant has produced credible evidence to show distinctiveness of the trade mark ""Liverpool Cables""; and (ii) the",

only consideration that is relevant in dealing with an application to register a geographical name is as to whether that name has any connection with,

the class of article in respect of which it is proposed to register the name as a mark and since the word ""Liverpool"" has no special significance in",

connection with cables, the same is entitled for registration. 1 The Registrar of Trade Marks challenged the judgment of Justice Romer before the",

Court of Appeal. Lord Hanworth M.R., while reversing the Judgment of Mr. Justice Romer, held as follows:",

In the Davis case ((1927) 44 R.P.C. 412) I made some observations in my judgment about the considerations which ought to apply to words, and I",

pointed out that Lord Justice Vaughan Williams had said in the case of Hommel v. Bauer & Co. (1905) 22 R.P.C. 43, at page 48) at a time when, of",

course, the Act of 1905 had not come into force, but these observations are general.--",

In all these cases if primary meaning of a word is a simple and easy primary meaning, known to everybody, it is extremely difficult to establish that in",

any particular trade this word has lost its well-known and original meaning, and in that trade acquired a secondary meaning to the exclusion of the",

natural and original meaning of the word. And, of course, this difficulty is not nearly so strong or so difficult to get over in a case where the word",

which is applied is a word of which the meaning is not one which would be known to everyone who came in contact with the word.""",

Now Sir Duncan Kerly asks us to register ""Liverpool Cables"" not as connoting that the cables have been made at Liverpool at all; whether the works",

were moved to Leeds or to Newcastle, makes no difference. What Sir Duncan Kerly claims is that ""Liverpool Cables"" means the Applicants' goods",

and nothing else; so that he has secured a secondary meaning to ""Liverpool,"" that is to say, that it means the Applicants' goods and no others. Applying",

those observations of Lord Justice Vaughan Williams, which to my mind seem to be grounded on very good sense, is it right to say that ""Liverpool",

Cables"" with that ward ""Liverpool"" has so become distinctive of the Applicants' goods, and has lost its primary meaning? It appears to me that is a",

matter for grave consideration, and inasmuch as there is no question that some taint or disability applies to geographical words on the whole, it requires",

considerable force of argument to hold that this word ""Liverpool"" has ceased to be used in its primary meaning and when you come to regard the",

rights of the public at large, the traders at Liverpool and the like, it appears to me that the Registrar would be quite right in holding that a word of that",

importance and significance ought not to be used or allowed to be treated as a word capable of distinguishing, because it has not merely to be capable",

in fact, but it must be capable in law. The question as to whether the words do distinguish the goods is a question of fact, of course, and I need not go",

back to Lord Justice Moulton's judgment. Indeed when you are dealing with a matter which is a question of degree, it is a question of fact, but Lord",

Justice Moulton in giving the illustration of Monte Rosa cigarettes, and Teneriffe boiler plates, has given an illustration where a geographical term has",

been used in such a collocation as clearly to indicate that there was nothing geographical in its sense. As regards Monte Rosa cigarettes the,

geography must cease, and it must be but a pet name for the cigarettes; equally with the boiler plates and Teneriffe. But when we come to a large",

trading centre like Liverpool, it seems to me that very different considerations apply. Therefore the word ""Liverpool"" appears still to remain a",

descriptive term, and I am quite conscious of the fact that you may have a term which is both descriptive and distinctive, but before it is to be",

registered as a trade mark, it must have become distinctive in the sense that the distinctiveness entirely outweighs the descriptiveness.""",

(emphasis supplied by the Applicant),

34. While on the said Judgment, the following observations of Lawrence L.J. in the said Appeal:",

Now in dealing with the words in Section 2, sub-section (2), of the Act of 1919, the learned Judge has expressed a doubt whether there is any",

distinction between ""capable of distinguishing"" and ""adapted to distinguish."" In the circumstances of the present case I think there is no such",

distinction. I expressed my views in the 'Ustikon's case as to the difference there is between those two phrases, and it will be seen from what I said",

there, that the expression ""capable of distinguishing"" seemed to me to have a somewhat wider import than the expression ""adapted to distinguish"" as",

interpreted by the authorities. That observation of mine had reference to a mark which at the date of the application had not, but which if used long",

enough, might thereafter become distinctive of the goods of the proprietor of the mark. That distinction is immaterial in this case, because here we",

have a case where it is shown that the user, of the mark for 20 years had rendered it distinctive of the goods. We are not, therefore, dealing with a",

case where a short user such as two years might not have rendered the mark distinctive, but a continued user might thereafter render it distinctive.",

Therefore, although for present purposes, it seems to me that the same considerations which would apply to an adapted to distinguish, also apply to an",

application under the Act of 1919 to register a mark on the ground that it is capable of distinguishing, yet in neither case is distinctiveness in fact",

conclusive. In this respect, therefore, I differ from the reasoning of the Learned Judge upon which I think the whole of his judgment is founded.",

The crucial question which the Court has to determine in the present case is, whether the words ""Liverpool Cables"" are really adapted to distinguish or",

capable of distinguishing the goods of the Applicants. What do those words denote according to their ordinary signification? It seems to me impossible,

to dispute that such words may have been rendered distinctive either, if there are other cables manufactured or marketed in Liverpool. It is quite",

possible that such words may have been rendered distinctive either, if there are other cable manufacturers in Liverpool, because such manufacturers",

have been complacent and have allowed the applicants to describe, their goods as ""Liverpool Cables"", or because the Applicants were the only",

manufacturers of cables in Liverpool. Also it is not inconceivable, that the Applicants' own name may have had a great deal to do with it. But",

whatever may be the reason which has rendered those words distinctive, it seems to me in the circumstances that they ought not to be placed upon",

the Register as a Trade Mark. Liverpool is one of the largest trading centres in the United Kingdom, and it is to my mind not to be thought of that a",

manufacturer of or dealer in goods of a kind which ordinarily be manufactured and merchanted in such centres should be allowed to monopolise words,

which simply denote that the goods come from that centre. What seems to me to be the vice in registering such words as we have here is that such a,

registration must tend to embarrass traders who are either already trading in cables in Liverpool, or who may hereafter so trade; any such traders",

would have a difficulty in describing their own goods, if prevented from using the words ""Liverpool Cables"". In considering such a mark as this, it",

seems to me important to bear in mind not only that Liverpool is a large manufacturing centre, but also that it is a centre in which it is proved that",

cables are already being manufactured, and in which there is no reason to suppose there may not be other manufacturers of and dealers in cables in",

the future whose rights it is the duty of the Court to protect.""",

(emphasis supplied by the Applicant),

35. The Applicant submits that GOA is one of the most popular tourist destinations, not just in India but in the entire world. A monopoly over the word",

GOA in relation to alcoholic beverages embarrasses the present and future manufacturers and traders of alcoholic beverages in GOA, who have/will",

have difficulty in describing their own goods. The continuance of the impugned registered trade mark on the Register of Trade Marks therefore,

hampers the rights of such manufacturers and traders to bonafidely use the word GOA in a descriptive sense in relation to their alcoholic beverages.,

Considering the importance of the word GOA as a tourist place and considering the public interest involved, the impugned registered trade mark is",

entitled to be removed/rectified from the Register of Trade Marks.,

36. The same issue again came up before the House of Lords in Yorkshire Copper Works Limited's Application for a Trade Mark 1954 (71) RPC-,

150. In the facts of the said case, the trade mark ""Yorkshire"" had admittedly attained 100% factual distinctiveness in relation to Applicant's solid",

drawn tubes and capillary fittings. However, the Registrar of Trade Marks refused the application for registration of ""Yorkshire"" on the ground of the",

same being a geographical name. The Court of Appeal upheld the said refusal. The Applicant challenged the Judgment of Court of Appeal to the,

House of Lords. The House of Lords, while affirming the Judgment of Court of Appeal in ""Liverpool Case"", held that the factual distinctiveness is not",

always conclusive and that regard must also be given to inherent adaptability of a trade mark to distinguish the goods/services of one from the other.,

The following observations by Lord Simonds (Lord Chancellor) are apposite:,

In my opinion the decisions of this House in the W. & G. case and the Glastonbury case are fatal to this proposition and I am content to accept as",

accurate the clear exposition of those cases given by the learned Master of the Rolls in the present case. He took the view which I share that the,

Court of Appeal had in the Liverpool Cable case rightly interpreted the opinion of Lord Parker in the W. & G. case and that this House, in its turn, in",

the Glastonbury case endorsed that interpretation. Accepting that view of the law, which indeed, if the matter were res integra, I should not hesitate to",

commend to your Lordships, I do not see how the Registrar could have come to any other conclusion. Unless, having found distinctiveness in fact, he",

needed to pay no regard to the other factor of inherent adaptability, he was faced by the fact that there could not well be a geographical name less",

inherently adapted"" than Yorkshire to distinguish the goods of the Appellants. I do not propose to try to define this expression. But I would say that,",

paradoxically perhaps, the more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them: for a Word that is apt to",

describe the goods of A, is likely to be apt to describe the similar goods of B. It is, I think, for this very reason that a geographical name is prima facie",

denied registrability. For, just as a manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim for his own a",

territory, whether country, county or town, which may be in the future, if it is not now, the seat of manufacture of goods similar to his own. I do not",

ignore that some protection is given by Sec. 8 of the Act, but I accept the view frequently expressed in regard to this section, and to Sec. 44 of the",

earlier Act which it replaced, and in particular by Lord Maugham, Lord Atkin and Lord Russell of Killowen in the Glastonbury case, that it should not",

afford a guide as to whether a name should be registered or not.,

I am led to suggest that it is perhaps easier to, define ""inherent adaptability"" in negative than in positive terms; in other words, I would say that a",

geographical name can only be inherently adapted to distinguish the goods of A when you can predicate of it that it is such a name as it would never,

occur to B to use in respect of his similar goods. Of such names the classic examples are ""Monte Rosa"" for cigarettes or ""Teneriffe"" for boiler plates.",

There will probably be border-line cases, but there is, in my opinion, no doubt on which side of the border lies Yorkshire', a county not only of broad",

acres but of great manufacturing cities. If the Liverpool Cable case was rightly decided, as I think it clearly was, a fortiori the Registrar was right in",

refusing registration to ""Yorkshire"".""",

(emphasis supplied by the Applicant),

37. Again in YORK Trade Mark 1984 (101) RPC 231, the question of registrability of the word YORK was raised before the House of Lords. Much",

like the facts of ""Yorkshire Case"", the word YORK had also acquired 100% factual distinctiveness. Lord Wilberforce, before reciting Lord",

Hanworth's above mentioned words, independently explained the importance of a trade mark being ""capable in law of distinguishing"", in the following",

words:,

The second distinction (between ""inherently adapted [or capable],"" and; ""adapted [or capable] in fact"") though verbally new in the Acts of 1937-8 is,",

on the other hand, relevant and crucial. It was not new in the law. In relation to adaptability it is sufficient to quote from a recent opinion of Lord",

Diplock in this House. In Smith Kline & French Laboratories Ltd. v. Sterling Winthrop Group Ltd. [1976] RPC 511, 538, he said:",

Long before the reference to inherent adaptability had been incorporated in the current statutes dealing with trade marks, it had been held upon",

grounds of public-policy that a trader ought not to be allowed to obtain by registration under the Trade Marks Act a monopoly in what other traders,

may legitimately desire to use. The classic statement of this doctrine is to be found in the speech of Lord Parker in the W.& G. case (1913) 30 RPC,

660 at page 672 where he said that the right to registration 'should largely depend on whether other traders are likely, in the ordinary course of their",

business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own",

goods.'""",

And there can be no doubt that exactly similar reasoning must be applied to the words ""inherently capable of distinguishing"" in section 10(2)(a) of the",

Act. They mean, in effect ""capable in law of distinguishing,"" the relevant law being the accepted principle that, in relation to certain words, of which",

laudatory epithets and some geographical names were established examples, traders could not obtain a monopoly in the use of such words (however",

distinctive) to the detriment of members of the public who, in the future, and in connection with other goods, might desire to use them. That this",

principle has been firmly laid down in relation, in particular, to geographical words, by a strong current authority, I shall now demonstrate.""",

(emphasis supplied by the Applicant),

It is submitted a laudatory epithet or a popular geographical name can never be said to have capability in law of distinguishing goods/services from,

those of others, although it may have acquired factual distinctiveness. To illustrate, the word BEST has been extensively used by Brihanmumbai",

Mahanagarpalika since time immemorial and has in fact acquired factual distinctiveness. However, the word BEST can never be capable in law of",

distinguishing goods/services of Brihanmumbai Mahanagarpalika from those of others. Similarly, a popular geographical name such as LIVERPOOL",

or GOA can never be capable in law of distinguishing the goods/services of one person from those of others.,

38. In the matter of Imperial Tobacco Co. v. Registrar of Trade Marks : AIR 1977 CAL-413, the Applicant filed an application for registration of a",

trade mark label containing the word SIMLA and device of snow clad hills in respect of manufactured tobacco on a proposed to be used basis in the,

year 1960. The Registrar of Trade Marks raised an objection to its registrability on the ground that the word SIMLA is a geographical name. In the,

year 1963, the Applicant withdrew the said application and filed a fresh application for registration of the same trade mark claiming user since the year",

1960 and stated that till the date of filing the said application about 42 crores of Applicant's cigarettes were sold under the said trade mark and over,

Rs. 15.50 lakhs were spent on advertisement. The Registrar of Trade Marks, however, refused the application for registration of the said SIMLA",

label. The Applicant preferred an appeal against the Ld. Registrar's said Order of refusal to the Hon'ble Calcutta High Court. The Ld. Single Judge of,

the Calcutta High Court upheld the Order of the Registrar. The Applicant filed an appeal against the Judgment delivered by the Ld. Single Judge of,

the Hon'ble Calcutta High Court. The Division Bench of the Hon'ble Calcutta High Court upheld the Judgment of the Ld. Single Judge. The relevant,

paragraphs from the said Judgment are reproduced hereinbelow:,

22. In regard to registration in Part B of the register provisions have been made in Sub-section (4) of Section 9. The essential conditions are that the",

mark in relation to goods proposed to be registered is (1) distinctive or (2) if not distinctive, capable of distinguishing the goods of the applicant from",

those of others. To be distinctive (which means adapted to distinguish) or capable of distinguishing the goods as aforesaid, there may be some inherent",

qualities or distinguishing characteristics in the mark itself which may make it so distinctive or capable of such distinguishing the goods of the applicant,

from others. The degree or extent of such inherent quality that may satisfy the requisite qualification for registration is left to the discretion of the,

Tribunal to determine, with his expert knowledge as the extent of quality is always variable from mark to mark.",

23. If however the mark has no inherent distinguishing qualities or features, the distinctiveness may be acquired by appropriate user or other",

circumstances thereby overcoming the negative quality in the mark. Here again the Tribunal has been given the discretion to register a mark in the B,

part of the register taking into account the extent of the distinctiveness or capability of distinguishing the applicant's goods from others in fact acquired,

by reason of the use of the trade marks or other circumstances. There is thus actually no question of exclusion of one clause by another in Sub-section,

(5) of Section 9 but all relevant factors are to be taken into consideration by the Tribunal who as an expert will exercise his discretion in the light of the,

provisions of law and judicial interpretation thereof. As has been pointed out by Kerly, a decision upon registrability involves balancing an inherent",

tendency to unregistrability on the one hand against evidence showing distinctiveness in fact on the other.,

24. All these are subject to the condition that where inherent unsuitability is so strong no degree of distinctiveness in fact can counter-balance it, so",

that some marks are totally unregistrable. This is for the reason that if any mark for example violates the requirements of Sub-clause (d) of Sub-,

section (1) of Section 9 such mark because of inherent infirmity can never be distinctive or capable of distinguishing the goods of the applicants sought,

to be registered from others goods either inherently or by reason of user of the mark or other circumstances.,

25. A geographical name according to its ordinary signification is such mark inherently or otherwise incapable of registration subject to such minor,

exceptions in regard to other aspects as noticed in judicial decisions referred hereinafter, in Corpus Juris Vol. 63 (1933 Edn.), in Chapter of Trade",

Marks etc. Art. 53 (pp. 356-7) it is stated:,

Geographical terms and words in common use to designate a locality, a country, or a section of country cannot be monopolised as trade marks; but a",

geographical name not used in geographical sense to denote place of origin, but used in an arbitrary or fanciful way to indicate origin or ownership",

regardless of location, may be sustained as a valid trade mark.""",

31. In the trade mark we are concerned with there is no dispute that though the mark is composite in character, including word 'Simla' in bold",

character with snow clad hills in outline and an inscription that the product is of the appellant in ordinary character or manner, the word 'Simla is the",

prominent feature of the mark and distinctiveness is claimed in respect of the word 'Simla'. Even so the trade mark is not confined to the word 'Simla',

and in the affidavits filed by the smokers on behalf of the appellant, the deponents say that the 'Simla' label bears the inscription in ordinary character",

of being the product of the appellant whose products are of good and standard tobacco. It is accordingly not possible to say that the word 'Simla' by,

itself has acquired a secondary meaning to its customers, so as to 'conjure in their mind the cigarettes belonging to the appellant only and to none else",

even if the mark did not contain the inscription that it was a product of the appellant. A trade mark like 'Simla' on goods to distinguish them from,

others goods as claimed must be the trade mark on its own without any assistance from indications like such goods being a product of the appellant.,

That is not the case possible here, as the mark 'Simla' does not stand on its own, so that it is not possible to say that by reason of the use 'Simla' is",

adapted to distinguish or capable of distinguishing as the goods of appellants to the exclusion of goods of others.,

32. As we have seen 'Simla' is not an invented word; and though it has no reference to the character or a place of origin of the goods sought to be,

registered it is not inherently distinctive or adapted to distinguish as there is no sufficient distinguishing characteristic in the mark itself so that,

distinctiveness might be expected to result whatever the type and scale of user and thus secure an estimation of the positive quality in the mark. This,

infirmity brings the trade mark out of the operation of Clause (a) of Section 9(5). There is no other circumstances pleaded and the user of the trade,

mark 'Simla' by itself as we have seen, on the evidence adduced cannot be said in fact as distinctive or capable of distinguishing the goods of the",

appellants from others by use in consequence whereof Clause (b) of Section 9(5) has also no operation. In arriving at this conclusion, we are not",

influenced by the finding that three years' time is too short for acquisition of distinctiveness, as there may he cases where a product may attain such",

distinctiveness within a short spell of time for its inherent qualities of the product.,

33. Even assuming that the trade mark 'Simla' has become capable of distinguishing by use thus fulfilling the condition of Clause (b) of Section 9(5),

entitling registration in Part B of the register, there are other formidable hurdles in the way for registration as already noted.",

34. As we have seen, the mark 'Simla' is a geographical name and the snow-clad hills in outline in the mark indicates its use in ordinary or",

geographical signification, so that the mark is neither a fancy or invented word nor one with a secondary meaning as has been observed in Kerry's",

Treatise (10th Edition).,

8.51. A word is not debarred from registration under Section 9(1)(e) as a distinctive word merely because it is geographical and so cannot be",

registered under Section 9(1)(d). Some geographical names can be inherently adapted to distinguish the goods of particular traders, but only if it can be",

predicated that they are such names as it would never occur to any other trader in such goods to use. At the other extreme, the name of a major",

industrial area or city will he totally un-registerable in respect of almost any goods. In between come the marks calling for more or less evidence that,

they are distinctive in fact.....it may lip the balance that the applicant ran show that he has a natural or legal monopoly of the production of goods,

concerned in the place concerned: but that alone will not make a geographical name registrable without substantial evidence of distinctiveness.""",

Though Clause (d) of Section 9(1) which refers to geographical name in ordinary signification relates to registration in Part A of the register, the",

distinctiveness of the trade mark which makes it capable of distinguishing the applicant's goods, as required in Clause (b) of Section 9(5) in respect of",

registration in Part B of the register, it is a vital and essential element for the purpose. Such distinctiveness is not possible for any geographical name in",

its ordinary or geographical signification. Though the rule has been relaxed in respect of small and insignificant place or where there is no geographical,

significance of the mark, if the geographical name propounded for registration is the name of an important country or a large district, county or city of",

commercial importance or has a geographical signification, the mark will be refused registration notwithstanding evidence of long and extensive use. In",

Liverpool Electric Cable Co. Ltd.'s case ((1929) 46 RPC 99) where registration was sought for trade mark 'Liverpool' in both Parts A and B of the,

register it was held that the name of an important commercial centre as Liverpool, even though it may in fact be distinctive of the goods in respect of",

which it is sought to register it is not registrable. In respect of Monte Rosa Cigarettes or Teneriffe Boiler Plates it was noted that there was no,

geographical significance in the mark which were mere pet names. It was further held that Liverpool being a well known city is geographical and not,

capable of distinguishing the goods of any particular trader and such registration will tend to embarrass traders who are in the trade or who may,

hereafter so trade as they would have difficulty in describing their goods if prevented from using the word 'Liverpool' Cables.,

38. Mr. Chakrabarty has referred us to the decision in Tijuana Smalls' case where registration in respect of cigars was allowed in Part B (1973 RPC,

453). Tijuana is a town in Mexico with inhabitants over 2 lakhs Graham J. in allowing registration in Part B held that the question whether a,

geographical word could be registered was one of degree. These words whose primary signification is geographical and where the geographical,

significance is so general and so likely to be adapted or desired for use by more than one trader, it would be wrong, however distinctive they might in",

fact have become ever to allow one trader by registration to seek to monopolise them (e.g. Yorkshire or Liverpool). There are other 'geographical',

words (e.g. North Pole) where, for one reason or other, when considered as applied to the goods in respect of which it is sought to register them, it is",

clear that the use is in fact clearly not geographical but fanciful, and was therefore, at least, capable, particularly by use, of being distinctive in practice",

of one of manufacturers' goods. Registration could, therefore, in such cases be allowed without causing inconvenience to or encroaching upon the",

reasonable trading rights of other manufacturers. The learned Judge found that the conclusion that Tijuana, an arid area, could well become tobacco",

producing centre being so improbable should be rejected.,

39. Strong reliance was placed on this decision by Mr. Chakravarti who contended that Simla was never a tobacco producing centre or likely to be so,

and there is no chance or occasion for any prejudice being caused to other traders or manufacturers. He also referred to the Trade Marks Journal,

published by the Government containing advertisements of various geographical names for acceptance: 'Sheemla' for agarbati, 'Gulmarg"" for wire,",

'Shalimar' for engineering goods 'Kalighat' for biddies were cited and referred. In all such cases it appears that the names prima facie are fanciful,

without geographical or ordinary signification and at this stage it will not be proper to depend on those marks without further material or evidence. The,

propositions of law in respect of geographical names have been referred to above and in view of the imprint of snow clad hills in outline in the trade,

mark 'Simla' the ordinary or geographical signification is obvious and patent even though it has no reference to the quality or place of origin of the,

goods as at present advised. Further, registration of such trade mark may hamper or embarrass the trade or traders in or around the locality in future",

as held by judicial authorities cited earlier in similar cases. Also 'Simla' is too prominent a city, the capital of Himachal Pradesh, well known in the",

country and abroad and in its ordinary or geographical significance it is inherently neither distinctive nor adapted to distinguish also nor capable of,

distinguishing the goods of the appellant as a particular trader from those of others and is also hit by the provisions of Section 9.""",

(emphasis supplied by the Applicant),

39. The Applicant submits that in view of the above, geographical names are usually considered inherently incapable of being registered. Only in a few",

exceptional cases, where such marks do not designate the geographical place/locality but indicate the origin of goods/services, the same may be",

registered. For example, words such as Santa Fe for automobiles, Mount Blanc for pens, Amazon for online retail market, North Pole for banaras etc.",

do not designate their ordinary or geographical signification, and hence they can be registered. The Applicant says and submits that, however, the",

inherent unsuitability of the word GOA is so strong that no degree of factual distinctiveness can ever counter-balance the same. The word GOA is not,

a small or insignificant place rather, as stated above, it has a very important and special geographical significance. The Applicant submits that the",

word GOA invariably denotes the State of Goa and not the goods or services of anyone much less that of the Respondent. The Applicant says and,

submits that no amount of use of the word GOA by the Respondent would ever cure its inherent unregistrability.,

40. In Manipal Housing Finance Syndicate Ltd. & Anr. v. Manipal Stock and Share Brokers Ltd. & Ors. (1999) 98 comp-cas 432 (madras), the",

Hon'ble Madras High Court refused an injunction in an action for passing off involving the word MANIPAL. The relevant paragraphs from the said,

judgment are reproduced hereinbelow:,

31. The commercial use of geographical names is universally well known. People and business enterprises identify themselves with the place from",

which they hail, live in or carry on business. Many a business enterprise uses the name of the city, town, region, or country as part of its business or",

corporate name. Monopoly over the use of geographical name is not the rule, but a rare exception to the rule.",

32. In any large city are to be found more than one business establishment whether or not carrying on the same trade, using the name of the town or",

city as part of its business name. In a large city like Madras, there are several large companies - well known nationally - who use the name of the city",

as part of their corporate name. Geographical names are invariably and subject to rare exceptions public juris - are in the public realm available for use,

by any one choosing to adopt it as part of the name of the business enterprise.,

33. Any exception to this rule must truly be an exception. It is only in a rare case where the name has been used very extensively for a long period, is",

so well known in the market as to be identified in the public mind with the product or service rendered by the business enterprise, that the court may",

consider granting injunctive relief to a plaintiff.""",

43. Prior user of the city name as part of their corporate name by itself does not confer any monopoly in favour of the plaintiffs. What is in the public",

domain cannot be appropriated and made one's own merely by being the first to use it as part of the corporate name. The right to such user of the,

city's name is available to others in the same measure as it is available to the plaintiffs. Neither the plaintiff's nor the defendants can claim exclusive,

right to the commercial use of the name ""Manipal"".",

(emphasis supplied by the Applicant),

41. The Applicant also relies upon the Judgment of House of Lords in A. Bailey & Co., Ld. & Clarke, Son & Morland, Ld. 1938 (55) RPC-253. In the",

facts of the said case, the trade mark ""Glastonburys"" was registered by the Respondent in relation to slippers, slipper-shoes and motor overshoes. The",

town of Glastonbury had a reputation for manufacturing and selling sheepskin slippers. The House of Lord, while allowing the appeal and restoring the",

judgment of the trial court, rectified the Respondent's registered trade mark ""Glastonburys"". The following observations of Lord Atkin are apposite:",

I assume, therefore, that the Respondents proved that the word was distinctive in fact, but for the reasons given by my noble and learned friend, I",

think it was not ""adapted to distinguish"". It matters little whether one says that in the circumstances the word was incapable of being adapted to",

distinguish, or that in the exercise of his discretion the Registrar should refuse to register. I myself prefer to say that in circumstances like the present",

where an applicant seeks to register the name of the town in which both he and competitors with himself are engaged in manufacturing the same class,

of goods the name is incapable of being adapted to distinguish. It should at the outset be considered unregistrable. I do not find it necessary to invoke,

Section 44, the object of which appears to be to give protection to traders in respect of a name which is 'registered and must be treated as adapted to",

distinguish, and not to afford a guide as to whether a name should be registered or not. I think that this Appeal should be allowed and the order of Mr.",

Justice Clauson restored.""",

(emphasis supplied by the Applicant),

The following observations of Lord Asquith of Bishopstone in Yorkshire Case:,

As to factor (a) (inherent distinctiveness), your Lordships have to consider to what extent this factor is present in the particular case in which the",

mark proposed for registration is a geographical term, e.g., ""Yorkshire"". I prefer to envisage this problem in the first instance in abstraction from",

authority. So considered, a geographical area, unless extremely small, seems to me inherently unadapted to distinguish the products of one producer in",

that area from those of another in the same area. When the area is as large as Yorkshire, it seems to me fanciful to dispute this proposition. Indeed,",

when the trade mark is geographical, it follows, paradoxical as it may sound, that it can only satisfy factor (a), where Its significance, in the particular",

context is non-geographical. For only so can it serve to distinguish the goods of one producer from the goods of others. Good imaginary instances of,

this paradox are ""North Pole Bananas "", ""Monte Rosa Cigarettes"" and so on. In these instances the geographical term is clearly not applied in any",

geographical sense, and pro tanto may-I will not say must - be a sufficient compliance with Sec. 9(3)(a). If it were applied in a purely geographical",

sense, it could not so comply, because it would simply indicate that the goods in question were supplied within a particular locality, not that they were",

supplied only by a specific supplier, and the last consideration is the only one which, for this purpose, counts.",

42. Even the Applicant relies upon the following passage from Halsbury's Law of India Lexis Nexis Butterworths [Vol. 20(1), New Delhi 2004] at",

Page 407 [185.727] A geographical name according to its ordinary signification is such a mark which inherently or otherwise is incapable of,

registration. Distinctiveness has been understood to mean some quality in the trade mark which earmarks the goods so marked as distinct from those,

of other producers of such goods. Those words whose primary signification is geographical are so general and so likely to be adapted or desired for,

use by more than one trader, that it would be wrong, however distinctive they might in fact have become, to allow one trader by registration to seek to",

monopolize them.,

(emphasis supplied by the Applicant),

43. The Applicant also relies upon the following passage from the Judgment in Glastonburys Case (supra) at Page 263:,

In these circumstances ought the word ""Glastonburys"" to have been registered as a Trade Mark for slippers in the first instance, and ought it now to",

be allowed to remain on the Register? In my opinion the answer to each question should be in the negative. With the Mark on the Register, no person",

who manufactured slippers in Glastonbury or sold slippers manufactured by someone else in Glastonbury, could advertise his goods as being what in",

fact they were, namely, Glastonbury slippers. It is no answer to say that the Appellants can, notwithstanding the registration, continue their practice of",

marking their goods as ""made in Glastonbury"". They and any future manufacturers of slippers in Glastonbury, and their respective retail customers,",

ought not to be hampered or restricted, by the presence of this Mark upon the Register, in selecting the particular form of words by which they desire",

to describe their goods as being-products of a town which enjoys a reputation in connection with the manufacture of sheepskin slippers. Just as the,

Court of Appeal in a subsequent case (re Boots' Trade Mark, 54 Reports of Patent Cases, 327) thought that the word ""Livron"" could not properly be",

registered under paragraph (5) of Section 9 in respect of tonic medicines for human use, because it was the name of a French town where similar",

medicines were manufactured, so, in my opinion, this word ""Glastonburys"" cannot properly remain on the Register in respect of ""slippers, slipper-shoes",

and motor overshoes"".",

(emphasis supplied by the Applicant),

44. In reply, it is stated on behalf of respondent that as per old law that cases relied upon by the Applicant are not applicable as per the provisions or",

Trade Marks Act, 1999. In this regard it is submitted as follows:",

In the Matter of Applications by the Liverpool Electric Cable Company Limited to register Trade Marks, 1929 (46) RPC 99",

a. The products manufactured under the mark 'LIVERPOOL CABLES' manufactured in the city Liverpool due to which the said mark was held to,

be descriptive in its use. However, in the present matter the Respondent No. 11 neither manufacturer nor sells its goods under the mark GIN in the",

State of Goa.,

b. It was also observed that there are multiple traders manufacturing cables and the use of the trade mark Liverpool shall cause embarrassment to,

them. It is submitted that the said judgment is based on the provisions of the old law which have been repealed or altered. However, as per the present",

regime prevalent in UK and India it is an absolute ground for refusal of marks which indicate the geographical origin of the goods applied for.,

c. Also, the use of a geographical mark in a descriptive manner so as to indicate the origin of the goods is protected under Section 30(2)(a), which",

protects a trade mark against infringement if used in such manner as stated hereinabove.,

In view of the same, the said judgment is not applicable in the present matter as stated by the respondent who stated that the same is not in",

accordance with the present regime and could not have been passed under the Current Law.,

• Yorkshire Copper Works Limited's Application for a Trade Mark. 1954 (71) RPC 150,

In the said judgment, it was observed that:",

the more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them: for a word that is apt to describe the goods of A,",

is likely to be apt to describe the similar goods of B...For just as a manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet, so",

he is not to claim for his own a territory, whether country, country or town which may he in the future, if it is not now, the seal of manufacture of",

goods similar to his own.,

It is also submitted that the said judgment was passed under the Old Law in UK which barred registration to geographical names, whereas the",

Current law contains the absolute grounds for refusal to marks indicating the geographical origin of die goods applied for there-under. Also, the",

Current Law in India further protects the registration of a mark on the ground of distinctiveness under Section 32.,

It is pertinent to note that, as per Section 9(1)(d) of the Old Law in UK, a mark must not contain word(s) which is/are a direct reference to the",

character or quality of die goods, and not being according to its ordinary signification a geographical name. However, the said provision was amended",

and further modified under Section 3(1)(c) of the Current Law in UK, which reads the terms 'quality' and 'geographical origin' separately and",

independent of each other. Therefore, the said judgment is inapplicable to the present matter.",

It is pertinent to note that the said principle applies to marks which are used by the traders in a descriptive sense, and which are not distinctive.",

However, in the present matter, the word GOA, which is the prominent and essential feature or the subject registered mark, is arbitrary to GIN in its",

application and is inherently distinctive for the said good. Also, the mark GOA of the Respondent No. 1 is distinctive and is capable of distinguishing",

from the other traders. Again, the trade mark Yorkshire was considered less ""inherently adapted"" so as to distinguish the goods of the Appellant in the",

said case.,

Therefore, the said judgment is not applicable in the present matter and the essential mark GOA is not violating the provisions of the 1999 Act and",

therefore the registration must subsist.,

York Trade Mark. 1984 (101) RPC 231,

It is stated by the respondent that in the said case, the High Court of Justice Chancery Division had stated that:",

...it had been held upon grounds of public policy that a trader ought not to be allowed to obtain by registration under the Trade Marks Act a monopoly",

in what other traders may legitimately desire to use.""",

Applying the said principle in the present mailer shall be contrary to the provisions of the 1999 Act prevalent in India, It is submitted that a",

manufacturer using a geographical mark with respect to goods indicating its origin from the said place is protected against an action for infringement,

infringed under Section 30(2)(a) of the 1999 Act. The mark GOA of the Respondent No. I is used for GIN which is nowhere associated with the,

State of Goa.,

c. Also, the Respondent No. 1 is not manufacturing or selling the goods in the State of Goa. Therefore, due to the above mentioned reasons, the",

registration for the mark GOA in the name of Respondent No. 1 shall not deprive any other traders of using the same with respect to goods originating,

from the State of Goa, and so far as the said mark is used in a descriptive sense and not as a trade mark.",

In view of the above, the said judgment is inapplicable in the present matter.",

Imperial 'Tobacco Co. v. Registrar of Trade Marks, AIR 1977 CAL 413",

The respondent has submitted that the decision is also not applicable as in the said matter, the Division Bench of the High Court of Calcutta held that:",

Strong reliance was placed on this decision by Mr. Chakravarti who contended that Simla was never a tobacco producing centre or likely to be so",

and there is no chance or occasion for any prejudice being caused to other traders or manufacturers. He also referred to the Trade Marks Journal,

published by the Government containing advertisements of various geographical names for acceptance. 'Sheemla' for agarbati 'Gulmarg' for wire,",

'Shalimar' for engineering goods 'Kalighat' for biddies were cited and referred. In all such cases it appears that the names prima facie are fanciful,

without geographical or ordinary signification and at this stage it will not be proper to depend on those marks without further material or evidence. The,

propositions of law in respect of geographical names have been referred to above and in view of the Imprint of snow clad hills in outline in the trade,

mark 'Simla' the ordinary or geographical signification is obvious and patent even though it has no reference to the quality or place of origin of the,

goods as at present advised. Further, registration of such trade mark may hamper or embarrass the trade or traders in or around the locality in future",

as held by judicial authorities cited earlier in similar cases. Also 'Simla is too prominent a city, the capital of Himachal Pradesh, well known in the",

country and abroad and in its ordinary or geographical significance it is inherently neither distinctive nor adapted to distinguish also nor capable of,

distinguishing the goods of the appellant as a particular trader from those of others, and is also hit by the provisions of Section 9. Sub-section (I).",

Clause (d) of the Trade and Merchandise Marks Act, 1958.""",

It is first submitted that at the time of tire said judgment, the old regime was prevalent which barred registration to geographical names.",

It is also submitted that the Division Bench in the said matter with respect to geographical names observed that the same can be registered, however",

declined to protect the rights under the trade mark 'Simla' because they believed that the registration of the said trade mark will hamper and embarrass,

the registrability of the same for the traders in the locality in the future. This aspect has been taken care of under Section 30(2)(a), Further, as already",

respectfully submitted hereinabove that the Section 9 has been amended to exclude geographical names. Such honest and bona fide use does not,

amount to infringement of a mark.,

Further, Section 32 of the 1999 Act protects registration of a trade mark on the ground of distinctiveness, which cannot declare a registered mark",

invalid if the same is distinctive.,

Therefore, on the basis of the above arguments, the said case is therefore not applicable under the provisions of tire 1999 Act.",

45. Counsel for the respondent has also referred few more authorities in support of his arguments.,

i) Sahkar Seeds Corporation v. Dharti Seeds : 2017 (71) PTC 77 (Guj),

The primary highlight of the said judgment of the High Court of Gujarat was the recognition of change in the term 'geographical name' to 'geographical,

origin' from the 1958 Act to 1999 Act as already highlighted hereinabove. The same was held in Para 6.1 of the said judgment. The same is,

reproduced herein below:,

That under old Trade Marks Act, 1958, the Trade Mark Registrar had power to refuse a trade mark under Section 9(1)(d) if one applies which",

suggest use of geographical name, whereas under Section 9(1)(b) of the new Trade Marks Act, 1999, the word 'geographical name' has been",

replaced by geographical origin He, therefore, would submit that a person can use a geographical name, however such name should not be suggestive",

as if the goods, service, etc are directly related to the geographical origin.""",

Applying the same principles in the present proceedings, the mark GOA of (lie Respondent No. 1 although being a geographical name, is not",

suggestive of the goods being GIN which is not related to the State of Goa.,

The Learned Single Judge of the High Court of Gujarat went on to further hold dial:,

Para 9: With regard to the contention about use of the word ""VADHIYAR"" which suggest geographical region, is concerned, 1 am of the opinion that",

VADHIYAR"" might he an area of State of Gujarat which is known as per its geographical situation, but there is nothing on record to suggest that this",

are is known for manufacturing of seeds of different types of grains. The seeds manufactured in Vadhiyari areas neither create some impression,

about the qualities, reputation nor other characteristic which attribute to its geographic origin. It is difficult to accept at this stage that the grant of",

VADHIYARI BIJ as Trade Mark by the authority to original plaintiff would mislead the public about the product. When the registration of the,

VADHIYARI BIJ WAS granted to the plaintiff it is difficult to accept that the authority has not considered the same before issuing the Registration"",",

and,

Para 13: ""As far as the above argument is concerned, I have already answered that the word ""VADHIYAR"" has already acquired distinctive",

character as a result of use made by it and the original plaintiff is in the business from 2008 or at least since 2010 as well as the differences between a,

use of geographical name and not geographical origin.""",

Therefore, it was specifically held that a geographical mark if used in the arbitrary manner and not in a manner so as to indicate the origin or source of",

the goods/services there under is likely to be registered. In view of the above, the subject mark containing the prominent and essential feature GOA",

being used and registered for the goods under class 33 is it geographical mark which does not indicate the origin of the goods there under and is liable,

to be registered under the Trade Marks Act, 1999. Without prejudice to the contention of inherent distinctive character of the mark GOA of",

Respondent No. I, the trade mark GOA due to its long, continuous arid extensive use since 1994 has acquired a distinctive character as a result of use",

made by it in a trade mark sense.,

ii) A similar observation was made in the earlier judgment of Geepee Ceval Proteins and Investment Pvt. Ltd. v. Saroj Oil Industry 2003 (27) PTC,

190 (DEL) (Trade Mark Chambal) wherein the Single Judge Justice Mahmood Ali Khan held that:-,

Para 8: The word 'Chambal' is a geographical name and a geographical name can be registered as a trade mark if its distinctiveness is proved.",

Therefore, Section 9 of the Act does not put a blanket ban on the registration of a geographical name as a trademark. Moreover, the present case is",

based on passing off the goods of the defendant as that of the plaintiffs' goods. Therefore, Section 27 of the Act would save the action of the plaintiff""",

Para 9: In Bharat Tiles & Marbles Pvt. Ltd. (supra) the trademark involved was ""Bharat"" and it was held that mere fact that geographical descriptive",

name is adopted is not always a defense in passing off action and an injunction was granted, in M/s. Hindustan Radiators Co. (supra) the trademark",

involved was ""Hindustan"", which is a geographical name, and an injunction was granted. In M/s. Khetu Ram Bishambar Das (supra) the disputed",

trademarks were ""Himalaya"" and ""Himachal"", both geographical names and were registered Was trademark and the injunction was granted. In Shri",

Jawaharlal & Anr. (supra) the trademark 'Bharat, which was a geographical name and an injunction was granted. In Bajaj Electricals Ltd. (supra), the",

trademark was 'Bajaj' which was a surname and was registered as a trademark. In a number of other suits which have been referred on behalf of the,

plaintiff the trademark was 'Gwalior' and 'Oxford which are geographical names and the injunction was granted. In South India Textiles & Ors.,

(supra) the trademark was 'South India' and it was held that it does not affect the Emblem Act. In Sunder Hager Association Regd. & Anr. (supra) it,

was held that 'Sunder Nagar' a geographical name, can be a trademark. Same view was taken in Bunwari Lal Sham Lal (supra) where Landra' a",

geographical word was upheld as trademark. In Mahendra & Mahendra Paper Mills Ltd. (supra) the word ""Mahendra"" was accepted as a registered",

trademark and an injunction was granted. All these judgments would show that geographical name, if it had acquired distinctiveness, can be used as a",

trademark and may even by registered under Sub-section (2) of Section 9 of the Act.""",

Para 17: In view of the above submission made on behalf of the defendant, controversy between the parties now is confined over the use of word",

'Chambal'. There is no force in the contention of the counsel for defendant that as the industrial unit of the defendant is situated on the bank of river,

Chambal or in the area near Chambal ravines from which the word 'Chambal has been taken by the plaintiff, so the defendant had a superior right to",

use the word Chambal as trade mark of its product in' comparison to the plaintiffs, whose industrial unit is located far away from this area in Bundi in",

Rajasthan State. It has already has been observed that the word ""Chambal' when it has acquired distinctiveness of the plaintiff could he used as a",

trademark by the plaintiff for its product and a passing off action could be maintained against the defendant.""",

It was held that Section 9 does not put a blanket ban on registration of geographical marks. The mark GOA of the Respondent No. 1 is not,

manufactured or sold in State of Goa, and thus does not indicate the origin of the goods and is thus not capable of deceiving the public. Also, the said",

mark is inherently distinctive as it is used arbitrarily for GIN. Further, without prejudice to the contention of inherent distinctiveness of the mark GOA,",

due to the long, continuous and extensive use of the said mark since 1994 by the Respondent No. 1 through its predecessor and thereafter by itself, the",

same has acquired distinctiveness and is associated by the public and members of the bade with the Respondent No. 1 only.,

iii) The High court of Delhi held in Hi-Tech Pipes Ltd. v. Asian Mills P. Ltd. 2006 (32) PTC 192 (Del.),

Para 33 The important aspect to be considered is whether the word 'Gujarat' has acquired secondary significance and has distinctiveness in respect",

of the steel pipes produced by the plaintiff, This principle finds Support front the judgment of the learned Single Judge of the Gujarat High Court in",

Bharat Tiles and Marble Private Ltd. Case (Supra) as it was held that merely because a trade name is geographically descriptive, it does not imply",

that an action for passing off cannot he maintained provided the plaintiff is able to establish the requisite grounds of deceit by use of similar name.""",

Para 38: A perusal of the plaint and documents shows that sufficient material has been placed on record to substantiate the plea, at least prima facie,",

of such user over a period of time from the sates running into crores under the said trade mark starting front 1987-88 till 2001-02, the details of which",

have already been mentioned hereinabove, it does appear prima facie that the name 'Gujrat' has acquired secondary meaning and distinctiveness and",

has thus come to be exclusively identified and recognised with the products of the plaintiff. The defendant is a much later entrant in the field. The,

various sample invoices and other documents placed on record do show such vast sales end trade in the particular product under the trade mark name,

Gujarat has resulted in a situation where the trade mark, mine has prima facie acquired secondary significance and distinctiveness with the plaintiffs",

product. The use by the defendant of the same trade name for the same nature of products does seem to be an attempt at passing off its goods as that,

of the plaintiffs. The defendant in fact wanted the plaintiff to restrain itself by a notice but on the plaintiff showing material of much prior use decided,

to take a turn in its defense, it may he noted that further enquiry in this behalf can be made during the trial.",

Para 39. I am thus of the considered view that the interim orders granted on 22.07.2002 are liable to be confirmed during the pendency of the suit",

restraining the defendant from using the trade mark 'Gujarat or 'Gujrat.""",

46. Relying on the principles laid down in the above case, it is submitted on behalf of respondent that the mark GOA of the Respondent No. 1 which is",

being used by the Respondent No, I though its predecessor in interest since 1994 has garnered immense goodwill and reputation and has thus acquired",

a secondary meaning.,

47. The respondent has referred CORPUS JURIS [""Vol. 63, (1933 Edn.) in Chapter on Trade Marks, etc,. Article 53, pp. 356-7]",

Geographical terms and words in common use to designate a locality, a country, or a section of country cannot he monopolized as trade marks; but a",

geographical name not used in geographical sense to denote place of origin: but used in an arbitrary or fanciful way to indicate origin ownership,

regardless of location, may be sustained as a valid trade mark""",

The leading authority relating to geographical names and section 3(1)(c) of the Act is the judgment of the CJEU in Windsurfing Chiemsee Produktions,

- und Vertriebs GmbH (WSC) v. Boots - und Segelzubehor Walter Huber and Franz Attenberger (Joined cases C-108/97 and C-109/97,

(""Windsurfing""). The CJEU in the said judgment held under paragraph 17 that-",

In view of the foregoing, the answer to the questions an Article 3(1)(c) of the Directive must be that Article 3(1)(c) is to be interpreted as meaning",

that;,

It does not prohibit the registration of geographical names as trade marks solely where the names designate places which are, in the mind of the",

relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to lye used",

in future by die undertaking concerned as an indication of the geographical origin of that category of goods; where there is currently no association in,

the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess",

whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of",

that category of goods; In making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of",

persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods",

concerned;,

It is not necessary for the goods to be manufactured in the geographical location In order for them to be associated with it""",

Based on the above principle, the Comptroller-General of the Intellectual Property Office of the United Kingdom (""UKIPO"") in the matter of",

consolidated actions in Cancellation 500096 by Elgin beverages against Trade Mark Registration No. 262870 in the name, of Char (UK) Ltd. and",

Opposition 103965 by Char (UK) Ltd. against Application No. 262287H0 in the name of Elgin Beverages between the marks ""OXFORD",

TEA/OXFORD DRY ICED TEA"" upheld that:",

Para 26: Applying the principles of Windsurfing the first question to address is whether OXFORD is associated in the mind of the genera) public with,

tea, beverages (tea based), fruit tea, herb tea and iced tea.""",

Para 34: I am mindful of the comments in Windsurfing that it is not necessary For the goods to be manufactured in Oxford for there to an association.",

It is dear that the goods are not manufactured in oxford and there is no evidence to suggest that this may be the case in the future Further there is no,

evidence that shows that there, is any form of association between Oxford and tea, or then: is a likelihood of this. In view of the aforementioned, I",

conclude that even though the goods are not manufactured in Oxford, in the minds of the average consumer there is no association between Oxford",

and tea.,

Para 35: In view of the above, I dismiss the invalidation claim based on Section 47(1) and Section 3(1)(c) of the Act in relation to all of the registered",

goods.""",

Applying the principles laid down in the above matters, admittedly goods under the trade mart GOA are not manufactured by the Respondent No. I in",

Goa. Also, there is no association between GOA and GIN and moreover there is no association between GOA and GIN in the minds of the",

consumers. Thus, applying the interpretation of Section 3(1)(c) (which is corresponding to Section 9(1)(b) of the Trade Marks Act, 1999) held by the",

CJEU and further being held by UKIPO in the matter of ""OXFORD TEA/OXFORD DRYICED TEA"", the trade mark GOA for goods being GIN,",

does not violate the provisions of Section 9(1)(b) of the Trade Marks Act, 1999.",

48. In National Lead Co. v. Wolfe 105 U.S.PQ. 462, the Court of Appeals on page 466 held that:-",

Thus one who manufactures paint in Holland cannot he restrained from selling his product as ""Dutch"" paint any more than a watch manufacturer in",

Switzerland can be prevented from selling ho ""Swiss"" watches. No use. of the word ""Dutch ""in a geographical sense is involved here for neither",

appellant nor appellees are marketing products or goods, likely to be understood by purchasers as representing that the foods or their constituent",

materials were produced or processed in the place designated by the name or that they are of some distinctive kind or quality as the goods produced,",

processed or used in that place.""",

49. The next contention of respondent No. 1 is that the alleged shift in law is further negated by the fact that even in the judgments in Liverpool,",

Yorkshire, York and The Imperial Tobacco Company (Supra), which were under the earlier. Statues, the Court has recognized that certain",

geographical names can be registered as trade marks. For example, while referring to such ""registrable"" geographical names it was observed",

Indeed when you are dealing with a matter which is a question of degree, it is a question of fact, but Lord Justice Moulton in giving the illustration of",

Monte Rosa cigarettes, and Teneriffe boiler plates, has given an illustration where a geographical term has been used in such a collocation as clearly",

to indicate that there was nothing geographical in its sense. As regards Monte Rosa cigarettes the geography must cease, and it must be but a pet",

name for the cigarettes; equally with the boiler plates and Teneriffe. But when we come to a large trading centre like Liverpool, it seems to me that",

very different considerations apply.""",

50. It is not denied by the respondent No. 1 that GOA is in fact famous for alcoholic beverages including Gin. The respondent Proprietor has,

contended that GOA is famous for other alcoholic beverages including Whiskey and Vodka, but it is not famous for Gin. Whether a trade mark may",

serve in trade to designate geographical origin has to be looked from the point of view of an average consumer.,

51. It is admitted by the respondent that when the registration of both trademarks were obtained, there was hardly any user of the mark GOA. The",

respondent, in fact, is relying upon the user of the marks after grant of registrations. No disclaimer was imposed by the respondent No. 2 at the time",

of registration.,

52. An average consumer, who considers GOA to be a popular tourist destination and a place where one can enjoy alcoholic beverages without",

burning a hole in one's pocket, is bound to believe that GOA is popular for all kinds of alcoholic beverages including Gin.",

53. In practical, the consumer cannot check the statistics pertaining to manufacture of different categories of alcoholic beverages in GOA before",

forming such an opinion. An average consumer therefore associates GOA with all the alcoholic beverages including Gin.,

54. Mr. Kane, learned counsel appearing on behalf of applicant submits that if the principle of law purportedly laid down by the OXFORD case is held",

to be correct law rightly, then name of any city/country, howsoever familiar and well known it may be amongst the consumers, may be registered in",

respect of goods which are not manufactured in those place/s. ""Mumbai"" can therefore be registered as a trade mark in respect of coffee as Mumbai",

is not known to make coffee. ""Delhi"" can, for the same reason, be registered as a trade mark in respect of pharmaceutical preparations because it is",

not known to manufacture pharmaceutical preparations. The list is pending.,

55. It cannot be admitted in the present case that the geographic meaning of the word GOA is minor, obscure, remote or even unconnected with the",

goods or that the purchasing public would never expect the Registered Proprietor's Gin to be originating from the State of GOA. There is no force in,

the argument that since its goods are not manufactured in the State of GOA, the impugned registered trade mark is arbitrary/fanciful of the said",

goods. The said Judgment in NANTUCKET (supra) deals with a similar contention in the following manner:,

Since the mark CHICAGO is, thus, unregistrable even to a Chicago manufacturer who is the first to use that name for shirts without a showing of",

distinctiveness, one cannot accept, as urged by appellant, that the law recognizes better rights, ipso facto, in a company not located there which [677",

F.2d 104] happens to be the first to use that name for shirts. It is simply illogical to say that CHICAGO is descriptive of shirts if the manufacturer is,

located in Chicago, but arbitrary, if he is not located there. The public is not aware of the actual locations of most businesses. The public is aware of",

trade practice and makes, or is presumed likely to make, a goods/place association in either instance. Nor is it any less objectionable to a Chicago",

merchant if the term is used by a non-local rather than another local merchant.,

Our Analysis and Findings,

56. We have gone through the records of the present case and also considered the submissions advanced by the learned counsel for the parties at the,

bar. The issue which falls for consideration is the interpretation of the provisions of Section 9(1)(b) of the Trade Mark Act, 1999 as to whether the",

said provision prohibits the registration of the trade mark which are in the nature of geographical names in generality or whether by way of change in,

the language of the provision of Section 9(1)(b) restricts the applicability of the provision relating to absolute ground for refusal only relating to the,

marks or indication which may serve in trade to designate the geographical origin of the goods.,

57. For the sake of comparison of the two provisions, Section 9(1)(b) of the Trade and Merchandize Mark Act, 1958 and corresponding provision in",

Section 9(1)(b) of Trade Mark Act, 1999 are reproduced hereinafter:",

Section 9:,

Requisites for registration in Parts A and B of the register.,

(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) the name of a company, individual or firm represented in a special or particular manner;",

(b) the signature of the applicant for registration or some predecessor in his business;,

(c) one or more invented words;,

(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;",

(2) A name, signature or word, other than such as fall within the descriptions in clauses (a), (b), (c) and (d) of sub-section (1), shall not be registrable",

in part A of the register except upon evidence of its distinctiveness.,

Section 9(1)(b) of the of the Trade and Merchandize Mark Act, 1958, which is reproduced as under:",

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values,",

geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;,

58. From the reading of both the provisions together, it is clear that under the provisions of Section 9(1)(b) of the Trade & Merchandize Mark Act,",

1958, a trade mark was not allowed to register in Part A if it contains any geographical name. As against the same, the provisions of the amended",

Act, 1999 reads that a trade mark shall not be registered if it consists exclusively of marks or indications which may serve in trade to designate the",

kind, quality, geographical origin of the goods. Therefore, it is clear that the Trade Mark Act of 1999 has structurally altered the provision of Section 9",

including its wordings with respect to registrability of the geographical names. Whereas on the plain reading of Section 9(1)(b) of the trade &,

Merchandize Mark Act, 1958, it can be seen that what were prevented from registration were the trade marks containing geographical names as",

against the same, the reading of the provision of Section 9(1)(b) of the Trade Marks Act, 1999 suggests that the prohibition with respect to",

registrability is now attracted only in relation to marks or indications which may serve in trade to designate the geographical origin of the goods.,

59. In simple and plain words, what was earlier prohibited from registration is the trade mark containing a geographical name per se however, there",

exists a comparative shift in the approach and now what are prohibited under the Trade Marks Act is the marks or indications which may designate,

the geographical origin of the goods. This departure from prohibiting the geographical name per se in the earlier Act to preventing only those marks,

which qualify the goods-place association test is in accord with the change in approach with which the Trade Marks were registered internationally.,

This shift in approach is not followed merely in India but also in US, UK and other common law countries. However, this goods-place association test",

requirement is not merely required to be satisfied in presenti but also the assessment is left for the future ability of the geographical name or indication,

which may serve as a geographical origin of the goods as we shall see in our discussion below.,

60. If once sees the provision of Section 9(1)(b) of the Trade Marks Act, 1999, relating to absolute grant for refusal, it is clear that the said provision is",

in consonance with Article 3 of EU directive No. 89/104/EEC and also Section 3 of UK Trade Marks Act, 1994 both of the provisions which are",

similar in language,

61. The provisions relating to the EEC directive of Article 3(1)(c) has been interpreted by the European Court of Justice in the case of Windsurfing,

Chiemsee Produktions - and Vertriebs GmbH (WSC) v. Bootsund Segelzubehvr Walter Huber & Franz Attenberger, (2000) Ch. 523 (westlaw report)",

which has been relied upon by the respondent in the present case wherein the ECJ made certain significant findings in its judgment relating to,

prohibition concerning the registration of geographical name. The crux of the said findings can be summarized as under:,

(a) Article 3(1)(c) which is in consonance with Section 9(1)(b) of the Trade Marks Act, 1999 (with certain words here and there, however, the",

operative part remaining the same) is aimed at serving a public interest that the descriptive signs or indications relating to categories of goods of,

services in respect of which the registration is applied may be freely used by all and cannot be reserved for one undertaking alone. (Kindly see para,

25 of the report),

(b) With respect to signs or indications which may designate geographical origin of category of goods in respect of which the registration is applied for,",

the ECJ holds that the geographical names of such nature may be available in public interest as associating the goods with that place leads to,

favourable response of the consumer. (Kindly see para 26 of the report),

(c) The applicability of Article 3(1)(c) of the directive which is in almost pari materia with Section (9)(1)(b) of the Trade Marks Act, 1999 is not",

merely confined to registration of geographical name as a trade marks solely where they designated a specific geographical locations which are,

already famous or known for particular category of goods concerned and has already associated with the minds of the relevant class of persons,

including trade and average consumer but it is also applicable in the cases where such association is likely to be possible or where the mark is,

susceptible to be designating the geographical origin of the goods in the future and such connection can be established in future also. The ECJ placed,

reliance to the language of Article 3(1)(c) of EC directive which states 'indications, which may serve to designate. Geographical origin'. It is due to the",

usage of the wordings 'may serve to designate' clearly makes the provisions applicable to geographical names which are likely to attain association of,

geographical origin of the goods in the future as well as against the one which are already known. (Kindly see paras 29, 30 and 31 of the report.)",

(d) With respect to the mark's/geographical name's ability/capability to attain such an association in the minds of the public in future, the ECJ has held",

that the competent authority shall test the said geographical name by taking various variables into account including the degree of familiarity amongst,

such persons with that name, with the characteristic of the place designated by the name and with the category of the goods concerned. Therefore,",

the assessment of future association of the geographical name with the origin of the goods has to be tested by inquiring as to how familiar the said,

name is amongst the consumer and trade what are the characteristic of the said place designated by the name and whether the said place has got any,

association with the category of goods concerned or not and whether it is probable on account of taking into the said variables into consideration any,

such association, in future. All these variables can be taken into account on the existence of evidence available on record. (Kindly see para 31 and 32",

of the report.),

(e) Article 3(1)(c) doesn't prohibit, in principle, the geographical names which are unknown to the relevant class of persons or unknown to the",

designation of the geographical location and are unlikely to be believed that the category of goods concerned originate from there. (Kindly see para 33,

of the report),

(f) The connection of geographical location viz-a-viz the category of goods is not solely dependent on the basis that the goods are manufactured there.,

The said connection could be based upon ""other ties"" like the goods were conceived there and/or designed in the geographical location and natural and",

other ties which allows the public in general and trade to associate the goods with the geographical origin of that place including familiarity of the place,

with certain category of goods etc. Therefore, whether the goods are actually manufactured there or not is not conclusive of the fact whether such",

geographical location can be registered as a trade mark or not as there are other ties which the goods may have with that location. (Kindly see para,

36 of the report),

(g) Where the geographical name is already familiar as an indication of geographical origin in relation to certain category of goods, the requirement of",

furnishing the user has to be both long standing as well as intensive in order to meet the requirement of distinctive character (Kindly see para 50 of the,

report).,

(h) In assessing the distinctive character of the trade mark in respect of which the registration has been applied for, the account may be also be taken",

into consideration as to the market share held by the mark, how intensive the said market share is, geographically widespread and long standing user",

of the trade mark, the amount invested by the-undertaking in promoting the mark, the proportion of relevant class of persons who identify the goods",

originating from particular undertaking because of the mark, statement of Chamber of Commerce and Industry, etc. If on the basis of all these factors,",

the competent authority finds that the relevant class of persons for atleast significant proportion identifies goods as originating from particular,

undertaking because of the trade mark, then it must be held that the requirement for establishing the distinctive character stands satisfied. (Kind see",

para 51 and 52 of the report).,

62. The above are the guidelines given by ECJ when the issue with respect to registration of trade mark containing geographical name which is acting,

as an indication of geographical origin or is capable of acting as an geographical origin (sic) for consideration before the competent authority including,

the Court or Tribunal. The said guidelines have been followed by the UK Courts and are also consistent with the amendments carried out in the,

relevant laws including the law in India and also on the interpretation of the plain reading of the Act.,

63. In this connection, We would thus agree partly with the submissions of the counsel for the respondent that though the law has changed from",

earlier Act of 1958. However to say that the prohibition provided under section 9(1)(b) of Trade Marks Act, 1999 would extend only to the current",

geographical indications or the territories which are famous for particular goods and services would be misreading of the provision. The prohibition as,

per ECJ and We concur with its view shall also extend to the name of the places which are familiar to the minds of the and there exists a likelihood of,

the name of the place being used by many persons for the said categories of the goods and the likelihood of that territory further associating the,

geographical origin of the goods. In order to assess this position, the ""other ties"" of the goods vis-a-vis the territory or geographical name are",

significant which creates it future potentiality to act as geographical origin given the circumstances and evidences as it exists today. It is also not,

necessary that the goods are manufactured in that territory alone for the purposes of that assessment.,

64. Let us now evaluate the case of the parties in order to assess whether the geographical name GOA has any likelihood to act in trade to denote the,

geographical origin of the goods in particular ""gin"" for which the trade mark is registered. In this connection, I am proceeding to evaluate the overall",

assessment of the word GOA both in India as well as globally and also assessing the registrability of the said word GOA in peculiar facts of the case,

as well as its legal sustainability of the same on the basis of the parameters which are well defined and recognized. The same are as under:,

Overall of Assessment of Evidence,

• Familiarity of the name of GOA amongst the public,

In this connection, the applicant has filed the material suggesting that GOA is quite a familiar place amongst the public in India as well as",

internationally.,

By placing the reliance over the said material, it has been said that Goa is well known for the beaches, coconut trees and sun and internationally, it has",

been recognized on national geographic magazine as well as on lonely planet a amongst top 10 night life cities of the world. It has been stated that,

GOA has been recognized as best Indian destination for Relaxation. The respondent on the other hand nowhere disputes the familiarity of the name,

GOA with the consumers but merely goes on say that at present that GOA is not famous for GIN based product and thus the registration of the,

composite mark containing the essential features including the feature of the GOA can be sustained registration.,

• Geographical significance of the GOA in relation to any alcoholic preparation at present,

Both the parties agree that GOA has already famous for the growth of coconut and cashew nuts. The drink called feni which has got various flavors,

but most popularly coconut and cashew nuts is recognized as an authentic drink emanating from GOA. In fact, counsel for the respondent argued both",

orally as well as in writing that though GOA is famous for the alcoholic beverage Fenni but the same cannot become distinctive towards the other,

alcoholic beverages. (Coconut palms are abundant along the coastline of Western India and Goa, whereas the cashew tree was an exotic species",

brought by the Portuguese from Brazil to India. The feni consumed in South Goa is generally of a higher alcohol content (43-45% abv) as compared to,

the feni produced in North Goa. Commercially packaged feni is available at 42.8% abv. (kindly see the link: https://en.wikipe-dia.org/wiki/Feni(liquor)).,

• The notorietary of GOA as a place for consuming alcohols and spirits of various kinds,

Applicant has filed various figures and evidence to suggest that GOA is famous for consumption of various kinds of alcohols and spirits. This has been,

urged by the applicant by providing the following figures in the evidence:,

a) Consumption of alcoholic beverages in Goa is high. Goa State Excise website shows that in the year 2011-2012, Goa Government earned Excise",

Duty of Rs. 18,234.43 lakhs;",

b) The number of men and women consuming alcohol is high in GOA as compared to the national average. As per as survey, 44.7% GOAN men",

consume alcohol as against the national average of 29.3%, whereas 4.2% GOAN women consume alcohol as against the national average of 1.2%;",

c) Goa has more than 50 distilleries. It is not surprising that some of them in fact contain the word GOA in their respective trading names;,

d) Goa is one of cheapest places for alcohol loving travellers:,

e) The 'Prince of Travel' website has listed GOA has one of the cheapest places for buying alcohol. It says:,

The good news about India for cheapskate drinkers is that a few of its regions or states have low taxes (or no taxes) on alcohol, along with very little",

regulation. One of the eastern coast Pondicherry is one of these places, but the best place with the most variety is GOA, on the west coast, where you",

can get large and cold bottles of beer for under US2, even beach bars and restaurants",

f) Further, the website HOWFLUX has written an entire article as to why liquor is so cheap in GOA.",

g) UK based website www.johnthemap.co.uk has also written about alcohol being cheap in GOA. h) The famous daily newspaper DNA has written,

an article on the popularity of alcoholic beverages in GOA. In particular, it highlights the tourists' habit of sneaking out large amount of alcoholic",

beverages from Goa to their home town.,

• User of the third parties using the expression GOA as a composite label in respect of other alcoholic beverages,

a) It is a noteworthy fact that the respondent is not the sole proprietor user of the expression GOA in respect of the alcoholic beverages including Gin.,

It is noticeable fact that there are third parties who were and having been using the expression GOA as a part of the trade mark conveying the similar,

idea as that of the respondent who claim to have been using the mark GOA in respect of whiskey and other kinds of alcoholic beverages which is,

used along with prefix and suffix as a trade mark.,

b) The Trade Mark No. 1081383 for the label of the GOA special care containing various features which was applied on 18th Feb 2002 claiming the,

use of the user since 1.1.1992. The said mark was applied by some company under the name Kedia Castle Delleon Industries Ltd. originally and now,

after the change of name, it stands in the name of Chattisgarh Distelleries Ltd. The said mark has remained unchallenged and the currently renewed",

by the proprietor as early as in the year 2017. The representation of the label of the mark is reproduced as under:,

c) It is equally noteworthy to mention that the said mark contains a disclaimer/condition that ""Registration of this Trade Mark shall give no right to the",

exclusive use of the WORD GOA"". The said condition was imposed by the trade mark office in the year 2004 when the mark was applied in the year",

2002 claiming the user since the year 1992. It is thus evident that the trade marks office/respondent No. 1 was following the practice of imposing the,

conditions over the geographical names even after 10 years of user claim and after the enactment of Trade Marks Act, 1999. The another",

corresponding fact which is essential to note is that the respondent has not challenged the validity of the mark and both the parties are co-existing on,

the register.,

• Subsequent Registrations and applications of the trade mark containing the expression GOA and/GOAN in respect of alcoholic beverages as per,

the trade marks register,

The search report of the trade marks office reveals that there are many resgistrants of the composite labels containing the expression GOA/GOA as a,

part of the label in respect of the other alcoholic beverages: The position of the register in this respect can be summarized as under:,

All these applications and registrations are valid ones and apart from the same, there are cases which are lying under opposition and also the cases",

which are abandoned for non compliance of certain formalities before the trade marks office. Those cases we have not taken into consideration as at,

present, it cannot be said whether those applicants would revive their applications. There are cases which are applied in the name of GOA/GOAN in",

respect of mineral water and other beverages We are however considering the cases which are applied and registered in respect of alcoholic drinks,

including beers although they are falling in different classes 32 and 33.,

From the reading of the aforementioned registration and pending application, the following position can be immediately discerned:",

a) That there are parties who have registered and applied for the registration of the trade marks containing the expression ""GOA"" in respect of the",

alcoholic beverages of other types including whiskeys and wines etc.,

b) The reading of the marks like GOA SPECIAL, GOAN PRIDE and GOAN Classic Dry Wine and GOAN Treasure would suggest that all these",

registrants are trying to boast their products as a speciality product from GOA. At least, this is idea emanating from the reading of these marks and it",

shows that there is an immense attraction in the minds of the producers puffing their alcohols belonging to that GOA.,

c) Likewise, the composite labels enlisted above would also show that all these entities have shown beaches, beaches with palm tree, sunsets upon",

their labels conveying the idea of nothing else but the prominent geographical place GOA. In fact the said labels of the respondent are also conveying,

the same idea and is no more different in that sense. Thus, the cited applicants and registrants intend to show that their product has any connection",

with the territory of GOA which is famous for its beaches, palm trees and sunsets.",

d) The above applicant's and registrants of the composite marks include the applicants and registrants that are distilleries companies who are either,

belonging to GOA and also from other parts of India.,

e) Some of the players like that of the Chattisgarh distilleries Ltd. had reapplied the trade mark in the year 2016 claiming the user since the year 1992,

and also showing the sale figures since the year 1993 onwards as per the sale figures mentioned in the evidence by way of the affidavit filed by them,

before the trade marks. The total sales recorded in the said affidavit as available online till date is deposed to be Rs. 389 crores 19 lakhs. Therefore,",

apart from the respondent, there are serious contenders in the market who are using the word GOA along with the device of palm tree, beach and",

sunset prior to the respondent and having a substantial sales under the said marks. (All the documents relating to the said mark can be assessed from,

the trade marks registry's website which is the eregister maintained by the trade marks, that is open for public search and inspection)",

f) It is also seen that the practice adopted by the trade marks office in connection with the use of the composite marks and word marks containing the,

geographical name is inconsistent which is that in few cases, the trade marks office has imposed condition on the no exclusivity over the mark GOA",

and in some cases, some other type of condition has been imposed and in few cases, there are no conditions that have been imposed by the trade",

marks office.,

All the above discerning points clearly go on to show that there are numerous parties/competitors both prior to and alongside the respondent engaged,

in the field of distilleries and selling of alcoholic beverages other than Gin who are intending and aiming to boast their products by using the expression,

GOA/GOAN as a part of the trade mark as an indicator of the products source. The idea conveyed by all these trademarks as noted above is clear,

indicator towards the famous geographical place GOA which is famous for beaches and palm trees and nothing else. This is though true in respect of,

alcoholic beverages and may be for other products as well. However, since we are concerned herewith the case qua alcoholic beverages and",

assessing the ties of the said place and its potential future connection with the said categories of the goods, our appreciation is confined to only the",

connection with that category of the goods only.,

• Distilleries in India hailing their alcoholic beverages emanating from Goa,

Apart from the distilleries that are originally operated by Goan citizens or belonging to Goa, even the distilleries from other parts of India are also",

hailing GOA as a source of origin for the their different kinds of alcoholic beverages. One of the whiskey Paul John single malt is openly promoting its,

single malt whiskey emanating from GOA on its website by claiming that it is emanating from goa. (See the website https://pauljohnwhisky.com/en).,

Further an article on livemint.com which is the online publication in its headlines reads ""Three cheers to Paul John, Goa's best-kept secret"" again",

shows that the company is openly declaring that their single malt is emanating from Goa. (See the link),

https://www.livemint.com/Sundayapp/156V8naRe266Gm6iE1RWQJ/Three-cheers-to-Paul-John-Goas-bestkept-secret.html).,

65. Another example is again of Chattisgarh Distilleries Ltd. which is belonging to the state of Chattisgarh but is using the mark GOA's special with,

the device of the beach and palm tree which conveys an idea that their whiskey is the one which is treated as speciality of Goa. Now if one goes by,

the argument of the respondent's counsel that Goa is currently famous for only Feni, then it may not be an appreciable to consider this aspect, We",

would have agreed with the counsel for the respondent if we would have been assessing only current position, but when one is measuring a potentiality",

of the geographical name and its abilities to serve as a geographical origin for the category of the goods, then this is again one of the significant factors",

showing the inclination of Indians depending upon the familiarity of the name and attractiveness of the same on account of it being famous-for having,

Alcoholic beverages and for that matter, the on going tendency of Indian manufacturers of Distilleries products to boast their products as that of Goa",

origin.,

• The Special connection of Gin and Tonic water with India,

It is now well recognized that Gin and Tonic water as a combination which have been invented in India and the said fact has been widely popularized,

world over. This is evident from the recognition of fact on various websites declaring the same position. According to Wikipedia; The cocktail (Gin,

and tonic water) was introduced by the army of the British East India Company in India. In India and other tropical regions, malaria was a persistent",

problem. In the 1700s it was discovered by Scottish doctor George Cleghorn that quinine could be used to prevent and treat the disease. The quinine,

was drunk in tonic water, however the bitter taste was unpleasant. British officers in India in the early 19th century took to adding a mixture of water,",

sugar, lime and gin to the quinine in order to make the drink more palatable, thus gin and tonic was born. Soldiers in India were already given a gin",

ration, and the sweet concoction made sense. (https://en.wikipedia.org/wiki/Gin_and_tonic).",

In fact an article in The Economic Times as recent as of 26th September 2018 having headlines ""How the global revival of gin drinking is manifesting",

itself in India"" written by Nayantara Maya Oberoi not merely explains Indian connection of gin drinking along with tonic water but also the tendency of",

the manufacturers of the Gin to pay homage to Indian cities by keeping the names of their Gin by using the names of cities as a part of their brand,

names. In her words, the article reads"" India is the world's fifth-largest gin consumer, though gin is small potatoes compared with whiskey and rum",

sales. Cheap compound gins, essentially ethanol with flavouring, are the biggest sellers, while premium gins, hampered by import duties, account for a",

small share of the market. Though many gin names pay tribute to India -- Bombay Sapphire, Jodhpur, The Star of Bombay, Old Raj (the famed East",

India Company, now owned by a London-based Indian entrepreneur, itself makes one, called East India.",

(httpsy/economictimes.indiatimes.com/industry/cons-products/liquor/how-g lobal-revival-of-gin-drinking-is-manifesting-itself-in-,

india/articleshow/65915738. cms),

• Prevalent use of GOA internationally in respect of GIN as a homage to the city of Goa,

As seen above, India has a strong connection with gin and tonic water and there exists a tendency amongst the manufacturers and sellers to pay",

tribute to Indian city by keeping their product name by using the name of the city of India as a part of the brand name, Goa is amongst such name",

which is already used internationally for the GIN. GOA London Dry Gin is a name for the Gin which is available in England as well as in other parts,

of Europe. The claim of the manufacturers of GOA LONDON DRY GIN is that the use of the said name is the homage to the city of India in view,

of the strong Indian connection with that of Gin. (Kindly see https://cocteleriacreativa.com/eng/ingredients/detail/1470/Goa_London_Dry_Gin). In fact,

the manufacturers namely COMPANIAINTERNACIONAL DE NEGOCIOS SA (CINSA) from Spain had also applied for the trade mark in India,

as a composite mark containing the expression GOA LONDON DRY GIN. The said mark has been earlier abandoned on account of some,

discrepancy and thereafter refused by the trade marks office on account of pre-existing entries. In sum, the position is that internationally as well, Goa",

is used and considered as a geographical name/city name which is paid homage for the Gin which has its roots in India.,

• Promotion of Goa in travel guides as a place to have a Gin on beach side internationally,

Apart from Indian connection of Gin and Tonic water and also prevalent use of GOA in respect of Gin, there is a wide scale promotion of GOA as a",

place where it is worth trying a Gin and Tonic water in popular travel guides. National Geographic Travel which is considered to be having an,

extensive circulation across the globe due to its reach through television and also through magazines physically as well online wrote an article ""Why",

You Should Sip Gin and Tonics When You're in Goa"" by Margret Loftus on 1.4.2015 wherein it is recommended to have a gin at the beach of GOA at",

sunset time. The reasoning given by the author is origin of gin and Tonic water from India. Thus, though India has a connection Gin and Tonic Water",

but Goa as a place is considered to be one wherein it is enjoyable to have the same. Likewise, in the same write up, there are various drinks which are",

considered as famous and enjoyed in other respective territories of the world like in Brazil, Cuba and Mexico. (http://www.natgeotraveller.in/why-you-",

should-sip-gin-and-tonics-when-youre-in-goa/).,

The similar write up was published by national geographic earlier also with the title ""Top Ten Beach Drinks"" by Paul Poplis on 8.7.2010 wherein Gin is",

said to be enjoyable beach drink at the time of sunset of Goa. (kindly see https://www. nationalgeographic.com/travel/lists/food-and-drink/beach-,

drinks/).,

Further, there is another travel guide which is tripadvisor.com, on the said website, there is a discussion amongst travelers from UK wanted to have",

gin with tonic water and various enquiries have been raised in the discussion under the head Drinks in Goa. (Kindly see,

https://www.tripadvisor.in/ShowTopic-g297604-i6045-k7014262-Drinks_in_Goa-Goa.html),

Another article on dailymail.co.uk under the head ""Getting away from the crowds on a chic Goa beach holiday"" written by Eiona Campbell in the year",

2011, the author counts the good experiences of Goa and one such experience was having a gin with tonic water at the outdoor bar of Goa. (kindly",

see https://www. dailymail. co.uk/travel/article-1343487/Getting-away-crowds-chic-Goa-beach-holiday.html),

• New Gin Manufacturers in India promoting GIN manufactured and distilled from Goa,

In addition to the connection of India with Gin, there are new Gin manufacturers in the market in India who are also widely publicizing their gin distilled",

in Goa. They are comparing their drink with the name HAPUSA gin and also Greater than Gin from Goa with that of another popular drink AMRUT,

which is internationally renowned drink from India. (kindly see https://www.livemint.com/Companies/QIejOJxH0ylmMRFkqZ5B1O/Nao-Spirits-,

maker-of-Indias-first-ever-craft-gin-brand-ge.html),

There is another article by the same manufacturer under the title"" We may finally have a homegrown good gin, thanks to a Goa based distillery""",

published in Hindu business line wherein again the manufacturer again promotes Gin as homegrown from Goa. (the story can be assessed at,

https://www.thehindu businessline.com/specials/luxe/leading-the-ginaissance/article22203754.ecel),

66. From the above which are factual in nature, one can discern the following:",

a) There are manufacturers and proprietors in India as per the trade marks office database who are registered and are using the labels/composite,

marks and trade marks containing the expression GOA prior to and also subsequent to that of the respondent.,

b) The class of persons/manufacturers with respect using the expression GOA are not confined to Goa based distillers but others as well which,

include Indian and international manufacturers and distilleries.,

c) India has a strong connection with Gin and Tonic water.,

d) Internationally, Goa is promoted as a place wherein Gin and Tonic water can be enjoyed as per travel guide.",

e) Goa is used as a part of the composite label of brand Goa London Dry Gin which is available in England as well as in Europe and other parts of the,

world. The said brand on account of international travel and easy dissemination of information is accessible both to Indians and foreigners. In fact, the",

said company has filed the trade mark applications in India showing its intention to do business in India. The explanation given by the Company to use,

the word GOA for Gin is that it is homage to the city of Goa in view of Indian connection of Gin and Tonic water,

f) Goa based distilleries are also boasting their products as GOAN's Pride Goan's treasure etc. The applicant has filed evidence to show the,

documents having Goa based distilleries.,

g) There is a strong connection amongst Britishers and those who are aware of British ruling India which include substantial segment of public that,

Gin and Tonic water is from India and they recount their experiences in Goa and prefer going there to have some Gin.,

h) There is a tendency amongst the proprietors using the name of the geographical place to pay homage to India based gin.,

i) There are new entrants in the market who are promoting the Goa distilled Gin as Home grown Gin from India.,

j) Apart from Gin, in fact Goa is also hailed as a place emanating other drinks like wine and whiskeys by other manufacturers in India.",

67. The above noted attendant circumstances based on the available evidence which are based on the records of the present case as well as the,

internet evidence available on world wide web having wide circulation amongst substantial segment of public would clearly go on to show that the,

other ties"" as contemplated by ECJ in the case of Windsurfing (supra) based on the ability of geographical name in particular GOA in the present",

case are potent enough to draw an inference that GOA has an ability to act as geographical origin of various kinds of alcoholic beverages including,

GIN in particular in future. The evidence suggests the potentiality in the name and its ability to act as a geographical origin for the alcoholic drinks,

including GIN in future given the fact that many manufacturers are already hailing GOA to convey the origin of their alcoholic preparations including,

GIN as well.,

68. We do not agree with the submission advanced by the learned counsel for the respondent that if currently the said connection is not there, that by",

itself is sufficient to close the issue and the bar envisaged under section 9(1)(b) is not applicable. On the other hand, we find that the evidence of GOA",

having special significance for beach based drinks and GIN and Tonic water specially admired by public from foreign origin who consider this as,

enjoyable at the Beaches of Goa is sufficient enough to draw an inference that the members of the trade will attempt in future to create a gin or for,

that matter other attractive alcoholic preparations which may signify GOA as a place of origin. We also reject the submission of the counsel for the,

respondent that merely because the law has changed, therefore there is no scope in law to attract such bar as per the law. On the contrary, after fair",

reading of Windsurfing case (supra), we find that the ECJ interpretation with which we respectfully agree mandates a competent authority to do the",

overall assessment of the evidence so as to see if the geographical name at present or in future has an ability to act as a geographical origin of the,

product in particular. This is what exactly we have done with respect to our assessment of the case. Thus, we are of the view that the bar envisaged",

under section 9(1)(b) is attracted.,

69. We also reject the submission of the learned counsel for the respondent that the conduct of the petitioner is unsatisfactory so far as the usage of,

the mark and its application for the registration of the trade mark is concerned. Though it is correct that there might be some kind of contradictions,

that would be existing in the stand taken by the applicant for the rectification so far as the exchange of communications are concerned, however by",

filing this petition and thereafter agreeing to disclaimer and condition on non exclusivity of the word GOA being a geographical name in favour of any,

proprietor, the applicant is calling upon this tribunal to bring the petitioner and respondent at par to each other so that the rights of the respondent is no",

way superior than that of the petitioner with respect to the exclusive claim of the word GOA is concerned. This recourse is available to the applicant,

in as much as the applicant is equally risking his own mark containing the expression GOA just like in the same way as he is attacking the mark of the,

respondent. Thus, we do not find that the conduct of the applicant and its manner of usage of the mark is fact relevant to this cancellation proceedings",

when the applicant being a person aggrieved can approach this tribunal and thereafter it is for this tribunal to make an overall assessment of the,

evidence with respect to the ability of the geographical name to act as a source indicator at present or in future. Since the other parties are also using,

the word GOA in the same manner and the position of law with respect to the exclusive claim of the mark was not clear, the applicant cannot as such",

be condemned on this ground when it is a matter of adjudication by the tribunal. In any case, the conduct of the applicant may not be of much",

relevance unless there are facts which prevents the applicant to approach this tribunal which are missing in the present case. The cancellation,

jurisdiction and assessment of the word on the touchstone of section 9 of the Trade marks act being a matter of public interest, therefore, the initial",

locus in the cases of public interest is merely confined to person aggrieved and it is for the tribunal to proceed further and decide the dispute in hand.,

The conduct of the applicant/defendant otherwise may have some role in the case of passing off and infringement suit but not in the challenge of such,

a nature.,

70. Apart from the parameters based on evidence, there are legal factors which also compels us to arrive at the conclusion which we are arriving at",

due to the following reasons:,

a) Firstly, though the conduct of the applicant for rectification is not of such relevance, but the conduct of the respondent who is the registered",

proprietor has a definite role to play in assessing the respondent's claim as the proprietor of the trade mark is bona fide or not. It may not be out of,

place to mention that the respondent while arguing the matter before this tribunal, limit the arguments by urging that the adoption of the mark GOA in",

respect to the Gin is arbitrary in nature. In this context, the following facts relating to conduct of the respondent are noteworthy:",

• That the oppositions which the respondent filed against the third parties which include in class 32 and class 33 applications, the claim of the",

respondent while asserting its rights against third party oppositions is that the applicant is the proprietor of the trade mark GOA in respect of ""alcoholic",

beverages"". In fact, the opposition has been preferred by the respondent against third parties for usage of the word GOA as a part of the trade mark",

in respect of the various goods which include alcoholic beverages of various kinds and even beers, water etc. Thus, the respondent is making a broad",

based claim of the proprietor of the trade mark GOA in respect of the alcoholic beverages where as it has been argued to the contrary. It is now well,

settled that a proprietor cannot claim a monopoly over a descriptive mark for the entire classification of the goods when his user is confined to merely,

a particular good falling in particular class. (See Nandhini Deluxe v. Karnataka : Reproduce \ 2018 (75) PTC 209 by Supreme Court of India) Thus, by",

arguing in a contradictory manner before various fora, the respondent is having an ambitious aim of preventing third parties from using the word GOA",

in respect of Alcoholic beverages in general when the evidence suggests that there exists a particular class of manufacturers both from GOA and,

outside GOA who are using the marks containing the expression GOA as a part of the trade mark. The respondent cannot be allowed to make a,

contradictory claims of proprietorship in the manner done by the respondent. The said fact is a relevant one so far as the public interest aspect,

involved in the present case.,

• The respondent although claims to be using the trade mark containing the expression GOA since the year 1994 and claims 24 years of user but no,

where furnishes the evidence since the year 1994. On the other hand, as per the respondent's own saying in the respondent's counter statement and",

written arguments, the respondent provides the sale figures for 6 years of user from 2009 till 2015 though claims to be using the trade mark since the",

year 2005 after obtaining the assignment from its predecessor who as per the respondent was using the mark since 1994. If one reckones the said,

user, then it can be said that the user which the respondent claims to be is of 24 years when it has actually been 6 years of user. Thus, the respondent",

has made ambiguous assertions while claiming the distinctive character. This aspect is essential in as much as even prior to the year 2009 since when,

the respondent shows the user of the mark, there were 4 parties who were having valid registration in their favour in respect of the mark containing",

the expression GOA. The user of distinctiveness on which the respondent lay great stress for the purposes of the retention of the entry should also be,

assessed vis a vis the rights of the third parties who are already having a valid registration in their favour and whose rights shall be compromised by,

affirming such prior user claim without any actual evidence of user being furnished by the respondent. Therefore, the bald assertion on the part of the",

respondent that it has been using the mark since last 24 years without actual user in documentary form cannot simply be accepted merely by looking,

at the date of the trade mark application or the user claim made in the application.,

b) Secondly, it has been argued by the respondent that the adoption of the mark GOA by the respondent and its predecessor is arbitrary in nature. We",

find inherent flaw in the argument preferred by the respondent when we peruse through the labels that are subject matter of this dispute. The,

representation of both the labels are already reproduced as under:,

From the perusing of both the labels, it is clear that the first label which is the subject matter of registration bears the mark Brihans along with the",

same the expression GOA is written wherein the label provides the device of beach and palm tree TWO in ONE Dry Gin and Lime is written therein.,

This is in consonance with the concept of GIN and Tonic water for which the Goa is widely promoted online and the said label clearly provides GOA,

and conveys the idea of geographical origin. It may be noted that the usage of the word GOA with a device of beach and palm trees conveys only one,

idea to the consumer which is that the same has some relation whatsoever with the famous geographical place namely GOA. This is due to the reason,

that device of beach, palm tree couple with sunset are always associated with goa which has been seen above. Likewise, the other label bearing",

BRIHAN's GOA SPECIAL DRY GIN bearing No. 629645 in class 33 also bears a device of girl sitting with a swim suit on the device of O with the,

blue colour water filled therein. This also conveys some beach side sitting which is also associated with GOA. Therefore, the plea taken by the",

respondent that the mark has been adapted arbitrarily to distinguish the goods of the respondent and it has got Poro inherent signs of distinctiveness is,

fundamentally (sic). On the contrary, it appears that the mark has been adopted by the respondent's predecessor to convey to the customer that it has",

some association with famous geographical place which is famous for beaches, palm trees, sun and sitting across the beach. The idea conveyed by",

both the labels suggests so. Thus, we reject the argument of arbitrary adoption. On the other hand, even the other players in the market like",

Chattisgarh Distilleries Ltd. amongst others have also adopted the mark GOA Special for whiskey in the same manner which also denotes the sun,

palm tree and beach signifying goa. Likewise, the goan distillers are also adopting the mark in the same fashion. Thus, the position of the respondent in",

adoption and use of the mark is no different from that of other parties who are denoting the origin of the products as GOA which is self evident from,

perusal of the label itself. Thus, the respondent is not correct in calling its adoption of the mark arbitrary when the idea conveyed by the mark is itself",

so expressive and descriptive qua both the labels and more so when the place is famous for the description provide upon the label.,

c) Thirdly, Whilst it may be correct that the wordings of section 9 of the Act has undergone a change as pointed out by the counsel for the respondent",

to which we have made the detailed discussion while going through the decision of Windsurfing (supra). However, the proviso to section 9 and section",

31 and section 32 cannot be read in isolation. The Trade Marks Act has also provided the ample safeguards so that the trade marks especially,

composite marks containing descriptive elements may not be protected so far as the descriptive part of the Trade Marks are concerned. This is a kind,

of counter balancing act has been provided in the form of section 17 of the Trade Marks Act, 1999. Section 17 is a provision which is aimed to be",

applicable in the cases where in the marks contain several matters especially like composite trade marks. Section 17(2)(a) and (b) provides that where,

the mark contains any part which is not a subject matter of separate application or a part which is otherwise of non distinctive character or of common,

to the trade character, then the registration of the mark shall not confer any monopoly right of that part over the whole. It is a kind of inbuilt statutory",

disclaimer wherein the legislature is preventing the exclusive right over the part of the whole of the trade mark which contains a non distinctive,

component. The similar section does not exist in UK law to which comparison is made by the counsel for the respondent. Thus, the requirement to",

establish the distinctive character in the law in UK in the cases of applicability of absolute grounds for refusal unfettered and uncontrolled by the,

provision analogous to section 17 of the Trade Marks Act, 1999. However, the position so far as India is concerned is not the same. The combined",

effect of reading of section 9, section 17 and section 31 and section 32 is that though it may be correct that there is a presumption of prima facie",

validity which is attached to the trade mark so far as the distinctiveness is concerned. It is also true that the registered trade mark can also be,

preserved so far as establish the distinctiveness qua post registration up till the commencement of proceeding is concerned. However, the inherent",

defect in the trade mark like the mark containing part which is a matter of separate application and/or is a non distinctive component or common to the,

trade component is concerned, the same is hit by the special provision dealing specifically with the part of the trade marks under the Act which is",

section 17(2)(a) and (b), the requirement of secondary meaning cannot proceed to wipe out the statutory bar which is registered proprietor is",

otherwise prevented of claiming monopoly thereto on such part of the mark.,

Applying the said proposition to the fact of the case, though it is true that common to the trade or non distinctive marks hit by section 9 requirements",

can be registered by showing the requirement of acquired distinctive character is concerned, however the same can still be subject to the rigours of",

section 17 which prevents the proprietor to claim monopoly over the non distinctive component parts or common to the trade parts. We find that GOA,

is geographical word which has larger significance and strong connection of various class of the public and thus involve a larger public interest due to,

its potentiality to serve as an indication of the origin of certain categories of alcoholic preparations, the strongest connection of which include Gin in",

particular. Furthermore, it is a matter of fact that the Respondent has also filed a separate application for the registration of trade mark GOA (word",

per se) bearing No. 2325854 in class 33, thus again the subject two trademarks under challenge if the Trade Marks Act 1999 is applied in a",

wholesome way are also hit by the provisions of section 17(2)(a) and Section 17(2)(b) and the monopoly in such a case can only be extended to the,

consideration of the label as a whole without claiming any exclusive rights over the word GOA in particular when it is of non distinctive character. The,

impugned marks so far as it contains the expression GOA as a part of the composite mark thus attracts the provisions of section 9(1)(b) and also,

section 9(1)(c) as it has also become a common mark in trade of alcohol in India and internationally as well.,

d) As regards the plea of applicability of section 31(2) which is furnishing of distinctive character up till the date of registration of the trade mark is,

concerned. It may be mentioned that factually the trade mark bearing No. 628446 was applied on 19.5.1994 claiming the use since 1.1.1994.,

However, the registration of the said mark was issued on 20.7.2005. It is noteworthy to mention that though the respondent claims the user since",

1.1.1994. However, the evidence filed before this tribunal along with the counter affidavit no where furnishes any evidence by way of affidavit filed",

by the predecessor of the respondent showing the sales of the products under the impugned marks between the period 1.1.1994 till 19.5.1994 and for,

that matter between 19.5.1994 till 20.7.2005. Likewise, it is also not mentioned in the written arguments as well. The earliest document relied upon by",

the respondent is the deed of assignment between the predecessor Brihan Maharashtra Syndicate Limited and Respondent No. 1 which is dated 5th,

October 2005 which is after the registration of the trade mark. The earliest invoice relied upon by the respondent No. 1 is also of Nov 2006. The,

earliest sales figures provided in the counter affidavit is also from the year 2009-2010. In the case of challenge of the impugned marks on the basis of,

violation of provisions of section 9(1) of the Trade marks Act, 1999 wherein the requirement of the proviso to section 9(1) is to provide the",

distinctiveness until the date of the application and the said requirement of showing the distinctiveness is then in turn stretched to the date of the,

registration by virtue of applicability of section 31(2). The said section 31(2) thus gives immunity to the registered trade mark. However, in the present",

case, there is no material which has been relied upon by the respondent No. 1 to avail that immunity by furnishing any evidence between the period of",

pendency of the application until the date of registration. In such an event, the registered proprietor/respondent No. 1 has failed to prove that the mark",

has become distinctive even on the date of the registration. The evidence on the contrary is post the registration which has been discussed separately.,

Rather even in the written arguments filed before this tribunal by the counsel for the respondent, the provision of section 31(1) is merely quoted and",

discussion regarding the provision of section 31(2) is missing, however section 31(1) of the Act with respect to prima facie validity which is a",

presumption of law is available to the respondent only when it is not put to challenge serious enough to shift the onus of proof to the registered,

proprietor. Here in the present case, on the assessment of the evidence available on record, it has been found that the provisions of section 9(1)(b) and",

(c) are applicable as per the discussion done above in detail and distinctiveness of the mark has been seriously questioned by the applicant. In such an,

event, the inability of the registered proprietor to provide the evidence in support of the distinctiveness even until the date of the registration which is",

up till 20.7.2005 stripes the immunity off from the registered proprietor. The impugned marks so fat as the expression GOA is concerned were non,

distinctive and could have been declared invalid as an entry wrongly remaining on the register even on the date of registration as they continued to,

contravene the provisions of section 9(1) of the Trade Marks Act even on the date of registration.,

e) With respect to the applicability of the provision of section 32, it is correct that the registered trade mark which has been registered in breach of the",

section 9(1) cannot be declared invalid if the distinctiveness during the period between the registration and the commencement of the proceeding,

challenging the registration is established. The respondent No. 1 has also filed such evidence where the sale of the Gin is shown under the name,

Brihan's GOA DRY Gin UP 35 from the year 2006 onwards by filing the invoices. Therefore, the trade mark as such cannot be declared invalid.",

However the provision of section 32 has to be read along with section 17 and section 57. The power to rectify as provided under section 57 is the duty,

of the registrar as well as IPAB in the interest of purity of register and the public interest is also required to be kept into mind. Power to rectify also,

empower the cancellation board to put any conditions and limitations upon the registered trade mark which will not render the mark invalid altogether,

but can also limit the scope and ambit of the registration so as to avoid unnecessary exaggeration of monopoly claims by the registered proprietor. The,

combined effect of reading of the section 17 with that of 32 and 57 is as follows:,

• The registration of the composite mark allows the exclusive rights to use the mark as a whole. The same is the spirit of section 17(1).,

• The registration of the part of the mark of the whole which are of non distinctive character and/or are not separately registered cannot be claimed,

monopoly thereof. (This is evident from the reading of Sec. 17(2)),

• The imposition of condition that the use of the mark shall be as a whole and without claiming any exclusive right over the word GOA in the case,

of composite mark which is a part of the entire label containing host of the features is in consonance with the spirit of section 17(2) while retaining the,

validity of the trade mark to be used as a whole as per section 32. (Even the registrar imposes the conditions at the time of registration). During the,

course of the arguments even the counsel for the respondent agreed that condition can be imposed that the respondent shall not claim monopoly rights,

over the word GOA in the state of GOA. This concession has already been given in the written arguments filed by the respondent as well. Thus there,

is no quarrel to the proposition that the conditions can be imposed by the cancellation board while the mark as a whole shall remain valid.,

• Therefore, the imposition of condition qua the part of the trade mark does not allow section 17 to militate against section 32 and both operate in",

different field. Where as section 32 generally protects the mark from violation of section 9 as such while furnishing the evidence of use as such.,

Section 17 is concerned specially with cases of complex marks in English law and composite marks containing various features in the Indian context.,

It is noteworthy to mention that section 32 is protective provision which protects the registration of the trade mark as it has been granted. When as a,

matter of law as per section 17, the non distinctive part of the trade mark falls outside the realm of the registration, then section 32 can only protect",

the registration which is granted as such with lawful rights flowing therefrom by combined reading of sec. 28 read with section 17 but cannot proceed,

to legitimize/fill in something which was unavailable at the time of grant of registration. The sequitur of the discussion done in the present paragraph is,

that imposing of condition on the impugned registrations that registration of the mark shall not give the exclusive right to the word GOA shall bring the,

registrations in consonance with the statutory scheme as is evident from reading of section 9, 17, 31, 32 and 57 and the registration shall still remain",

valid for the rights vested in the mark as a whole. This was the effect of the registration even on the date of the registrations when the new Act was,

already in force as the mark was non distinctive character even on the date of registration, however it requires reiteration in the form of condition",

upon the registration in view of the respondent's claim before various forum with respect to the exclusivity of the word GOA.,

• In any case on the facts of the present case, there are only invoices bearing the expression BRIHAN's GOA DRY GIN 35 UP which as per the",

respondent's own saying is a label mark. The evidence that exists as such is where the idea conveyed by the mark upon the label shows beach and,

palm tree on the label and it is clear that the said Gin has some connection with the geographical name GOA. There is also an added matter on the,

label including the mark BRIHAN'S which is also visible to the consumer and the other features including the slogan ""TWO in ONE"" amongst others",

which are also in the nature of the descriptive matters. The same is also the position with the other label as well. Thus, the impression given by the",

two labels is combination of various types of descriptive matter and brand name BRIHAN's subsisting on the label. The relevant perception of the,

public when they see BRIHAN's GOA label as a whole and the assessment whether they relate the word GOA with that of the respondent alone or,

as a matter of geographical origin of the product and what impression the label gives in the mind of the public is missing and no evidence has been lead,

to this effect. This is more so when the primary idea conveyed by it of a geographical origin of the product as the same is evident from the labels,

themselves. This brings even the establishment of distinctive character in doubt so far as the word GOA per se is concerned. It is questionable then,

whether the consuming public considers overall label as a distinctive which is combination of various variables and matters subsisting on the label or by,

presence the word GOA alone on the label. Therefore, it is difficult to say whether so far as the word GOA word per se is concerned, the immunity",

under section 32 is available at all. That is another reason that the imposition of condition is appropriate in the present case considering that the nature,

of evidence available on record is merely the invoices which is admittedly a composite label. This will retain the validity of the mark as a whole and,

keep the claim of the registration within the four corners of the law which is in consonance with the spirit of the Trade Marks Act, 1999 and",

simultaneously it will also not violate the provisions of section 32 of the Act as well. This is in addition to our finding that the provision of section 32,

cannot militate against statutory bar of section 17(2) of the Act.,

f) As regards the argument that the word GOA is a prominent feature, the question that it is of distinctive character or not and whether it is capable of",

serving a geographical origin of particular category of goods is altogether a different question which requires a consideration distinct from merely,

calling as one of the essential feature of the mark. There are features existing on the label that are prominent enough yet they are either descriptive or,

non distinctive in character. The assessment of the same is the dependent upon the overall impression given by the marks in the eyes of the public and,

other considerations and factors involved including the nature of the word mark and the requirement of the same in trade and the familiarity of the,

name to the public qua the said products etc as discussed above. The requirement of user as cautioned by ECJ in the case of Windsurfing case,

(supra) is an intensive and long user. This precautious approach of intensive and long user is also required to be balanced qua the legitimate rights over,

other proprietors whose entitlement to use shall be affected by the affirmation of the registration on the basis of the such evidence. In the present,

case, the respondent has not shown the evidence of user prior to the date of application and also until the date of the registration despite having onus",

to show as per the proviso to section 9 as well as section 31 of the Act. The respondent rather proceeded to only show subsequent evidence until the,

date of the commencement of the present proceedings. The significant fact which is noticeable is that by that time, there were already more 3 to 4",

serious contenders as per the records of the trade marks office came into the picture with respect to usage of the word GOA as a part of the trade,

mark with respect to wine, whiskeys etc. If one leaves few invoices and goes by sales figures, the respondent is showing the sales seriously from",

2009 to 2015 which is of 6 years that further shrinks the period of evidence. In such a scenario, the fact that had the familiarity of the word GOA",

would have been less and the usage of the word would have been rare in the industry, then the registration could have been affirmed easily on the",

basis of such subsequent or post registration evidence. However the position is not such in as much as the registration dates, user dates and evidence",

furnished by few of the proprietors including Chattisgarh Distilleries Ltd. in respect of the GOA Special whiskey label as per the evidence by way of,

affidavit available on the records of the register shows more intensive and long user since the year 1993 onwards by providing the sales figures on,

similar lines than that of the respondent. The claim made by the respondent by filing the opposition against third parties, the respondent is already",

preventing the third parties by claiming its registration to be extended to ""alcoholic beverages"" and even filing opposition against the proprietors using",

the word GOA as a part of the trade mark in respect to the goods like whiskeys, beers, water etc. So, the idea appears to be that respondent intend to",

have an exclusivity over the word GOA per se when simultaneously there are proprietors using the word as composite labels having more intensive,

and long users and even prior to that of the respondent.,

• As regards the mark of Chattisgarh Distilleries Ltd., earlier owned by one M/s. Kedia Castle Delleon Industries Ltd., it has been submitted by the",

applicant in the records of the present case that the said party filed an application for registration of a trade mark label containing the word GOA as its,

leading, essential and memorable feature under Application No. 1081383 in class 33 in the year 2002 in relation whiskey, gin, rum brandy etc claiming",

the user since 1.1.1992 prior to that of the respondent. The representation of the label is as under:,

• M/s. Global Technology & Trademarks Ltd. filed the opposition against the said application under No. BOM-190394. While dismissing the said,

opposition for want of prosecution, the Registrar of Trade Marks imposed a condition of disclaimer on the word GOA. The relevant paragraph of the",

said Order is reproduced here in below:,

Since 'GOA' is purely geographical in nature being the name of one of the prominent states of India, the same cannot be made subject of trade mark.",

The applicants cannot be allowed to claim any rights in 'GOA'. Accordingly, application No. 1081383 in Class 33 is accepted subject to the condition",

that -- the applicants shall have no rights in the word/device 'GOA' appearing on the label.""",

By placing reliance on the aforesaid order of the registrar, it has been contended by the applicant that even the parties using the mark GOA as a part",

of the label in respect of whiskey even prior to the user of the mark by the respondent have a disclaimer over the expression GOA in respect of their,

registration. It's a matter of the fact that the said registration is still valid and the said proprietor has also applied the mark in the year 2016 as well as,

noticed above and is thus an active player in the market.,

Having said that, it does not mean that those proprietors should get the word GOA per se registered in their favour or get the exclusive rights over the",

same in as much as this will also disturb the position as it exists currently. It is rather a balancing act where the cancellation board should pass the,

direction to the trade marks office to issue a condition in all future matters with respect to usage of the word GOA as a part of trade mark that no,

exclusive rights shall be accorded to usage of the word GOA as word per se. Going by that, the fitness of things require that in order to maintain the",

purity of the register and to protect the legitimate rights of the already subsisting registrants and also the ones who are potentially interested in using,

the word GOA as a part of the trade mark, the condition with no exclusivity to the use of the word GOA seems to be the more apt approach in the",

given facts of the case.,

g) The balancing of the rights of the parties happen even by considering the provision relating to concurrent right as provided under section 12 of the,

Trade Marks Act, 1999. As already seen above, the rights claims by the proprietors are even prior to that of the respondents containing the composite",

labels with features of palm tree, beaches etc. The respondent has been very selective in filing the oppositions against third parties in respect of",

various drinks but never challenged the registration of the prior manufacturers and may not be able to do so as well as per the law. However, the",

consequence of the same is that all the proprietors including other registrants have the rights concurrent and coextensive to each other. The said rights,

cannot be disturbed by giving the exclusivity to the one right holder over the geographical name whose user is subsequent to the serious contenders,

claiming prior rights. Rather, the balancing can be done by invoking section 12 (which empowers the registrar to register similar marks by imposing",

conditions and limitation as he deems fit) and the scheme contained therein by putting conditions and limitations on the impugned registrations so as to,

bring the rights of the respondents at par with others.,

h) As regards the interim orders relied upon by the respondent, I tend to agree with the submission canvassed by the applicant that most of the interim",

orders are ex-parte orders which resulted into the settlement of the case between the parties under the provisions of Order 23 rule 3 CPC. There is no,

finding of fact in such interim orders wherein the overall assessment of the distinctive character is made in an in-depth analysis which may persuade,

this court to rely those ex-parte orders to reject this cancellation action based on the violation of the provisions of section 9(1). Rather, on going",

through the orders relied upon by the respondent, there is only order which is detailed enough where in prima facie view has been expressed by the",

Delhi High Court on the contest of both the parties is the case titled as Radico Khaitan Limited v. Brima Sagar Maharashtra Distilleries Ltd.,

pronounced on 15th October 2014 passed in CS(OS) 1572/2013. In the said order, the learned single judge of the Delhi High Court in para 76 of the",

report observed thus:,

76 Even if some words comprised in a mark are generic still the mark taken as a whole can attain distinctiveness of the product of the proprietor. For",

example the words ""premium and whiskey"" may be generic words but when coupled with the other words like ""Brihan's"" then the mark as a whole",

Brihan's Premium Whisky would be capable of distinctiveness. More so when it is registered trade mark""",

This statement of law was expressed by the learned single judge while assessing the distinctiveness of the mark BRIHAN's Premium Whiskey label.,

The learned judge agreed that the mark as a whole can be distinctive leaving aside the generic words in the mark due to the overall impression given,

by the mark. This is exactly the finding we are arriving at para (e) and (f) above by assessing the evidence in the present matter due to the special,

reasons which we are giving in the present judgment. This again affirms that the approach we are following does not violate section 32 of the Act as,

the registered trade mark as a whole is preserved as against giving monopoly over the non distinctive component of the label.,

With respect to the usage of the word GOA, the learned single judge observed as under:",

99. The word GOA is a geographical name and in terms of the law laid down in the cases of High Tech Pipes Limited (supra) and Sundar Nagar",

Association (supra), a name originally purely geographical in its significance may become associated with the plaintiffs goods or services that its use",

on its own as a trade mark or name without adequate distinction will amount to passing off, especially if it is used in conjunction with get up or other",

indicia similar to that of used by the plaintiff""",

We are again of the same view that the remedy of the passing off shall be with the available to the respondent if in case anyone tries to encroach,

upon the rights of the respondent by using the deceptive means by adopting the deceptively similar mark and or get up and the same shall depend upon,

facts of each case.,

With the respect to exclusive right to the use of the word GOA, the finding was recorded by the Delhi High Court at para 100 which reads as under:",

100 The word GOA by itself may not be capable of protection as a trademark but when coupled with the mark BRIHAN'S the mark prima facie",

becomes distinctive. The fact that the BMSS had adopted the word BRIHMA'S as a prefix to the word GOA shows that it was aware that it could,

not use the mark GOA with the prefix BRIHAN'S as the same would be deceptively similar. The words BRIHAN'S GOA and BRIHMA'S GOA are,

also deceptively similar. The fact that the Defendant is claiming to be a successor from BMSS and is not claiming any independent right to the said,

mark, prima facie establishes that the Defendant cannot also use a deceptively similar mark.""",

The judgment of 15th October 2014 passed by the Delhi High Court was challenged before the Division Bench of Delhi High Court in FAO(OS),

458/2014 wherein vide order dated 13.1.2016 passed by the Division Bench, the court proceeded to record the application under order 23 rule 3 CPC",

filed by both the parties to the suit and appeal before the appellate court. While recording the settlement by the Division Bench of the Delhi High,

Court, the learned court in para 14 of the order observed the following about the finding arrived at para 100 of the order of the learned single judge:",

Concerning the observation made by the learned single judge in para 100 of the impugned decision, relevant para whereof has been noted by us in",

paragraph 6 above, lest it causes any prejudice to M/s. Radico Khaitan Ltd., we declare that the said observation would not be binding on M/s. Radico",

Khaitan Ltd. for the reason it finds an expression of tentative opinion formed by the learned single judge while deciding an application for an injunction.,

It cannot be equated as determinative of finding of law against the appellant""",

The reading of the aforenoted observation of the Division Bench in the appeal, it is clear that the court has merely observed that the finding recorded",

in para 100 is an expression of a tentative opinion and that's why it cannot be considered as a finding of law against the appellant. On the other hand,",

in the facts of the present case, we upon overall assessment of the evidence lead by the parties and also the evidence as available on the web and",

eregister arrived at the same conclusion which is that the distinctive of the word GOA as word per se is questionable so far as its claim of exclusive,

rights is concerned by the respondent as per the reasons and findings given in the present judgment. We however, concur with the view of the Delhi",

High Court as recorded in para 76 and para 99 of the judgment as reproduced above which was not even upset by the Division Bench in an appeal.,

Our independence conclusion is also in consonance with the view expressed by the Delhi High Court as recorded in para 76 and para 99 though on,

appreciation of evidence and the legal position as against merely a tentative view which was earlier recorded by the Delhi High Court.,

It is to be noted that the said findings in the above case are more recent and thereby also affects the reliance of the previous ex parte interim orders,

and settlement recorded by the courts earlier which may not be of much assistance to the respondents as on date.,

i) As regards the provisions of section 30 of Trade Marks Act, 1999 relied upon by the respondent is concerned, the same is misplaced in as much as",

the court is not concerned with the infringement action and the exceptions thereto but the scope and extent of the monopoly rights claimed by the,

respondent in its registered trademarks/labels. The exception to the infringement provision which are in the nature of safeguards or defence to an,

infringement action cannot be read as a defence to a cancellation action which is based on entirely different scheme. The justification that the defence,

to an infringement is provided under section 30 will not be a justification in law to defend a registration which is alleged to be in violation of the,

provision of section 9, the purpose of which is to protect public interest in general as per ECJ decision and well settled law in this country. Therefore,",

we reject the said submission.,

71. The above are thus legal factors in addition to the assessment of evidence carried out by us which also enables us to arrive at the same conclusion,

which arrived earlier, which is that the provision of section 9(1)(b) and also section 9(1)(c) are attracted in the present case as the word GOA is",

capable of serving a geographical origin of the categories of the goods which include Gin in particular and to the extent the said mark has been,

incorporated as a part of the label including the device of palm tree, sun and beaches which gives an impression to the minds of public to GOA, the",

prevalent use of the said signs and indications by the traders as a part of the label by Goan distilleries and other traders and manufacturers for the,

goods like whiskeys, wines etc leads us to also say that the said practice is bona fide and in some way appears to be established practice in the trade",

as the drinks are enjoyed at the beach side which is evident from Travel guides and Gin has a special reference as beach drink with a connection in,

Goa. For all these reasons the provisions of section 9(1)(b) and Section 9(1)(c) are attracted.,

72. So far as the establishment on distinctiveness part as per proviso to section 9 is concerned, in the absence of the evidence, when the onus was on",

the respondent, we infer that there exists a violation of the proviso at the time of the registration of the trade mark and the same is the position with",

respect to applicability of provisions of section 31(1) and section 31(2) is concerned. Therefore, until the time of registration, both the registrations are",

in violation of section 9(1) of the Act. Rather, the reliance of the respondent to section 32 which is in the nature of post registration distinctiveness",

itself affirms the position as is evident from the plain reading of the section 32.,

73. With respect to the applicability of section 32, we have already observed that though the provision is applicable but we have expressed our doubts",

to the establishment of the distinctive character of geographical name as Word per se as there is no promotional material and advertisement campaign,

that is available and rightly so as alcohol beverages are not promoted. However, the other means of advertisement as stated by the respondent in its",

written arguments is also a bald assertion and no where informs the tribunal about the ability of the Goa to act as a sole source indicator towards the,

respondent product. This is more so in view of our observation above that the provision of section 32 can be applied by preserving the mark as a,

whole and yet imposing a condition with respect to non exclusivity of the word Goa in favour of the respondent in view of the special reasons provided,

by us in the peculiar facts of the present case. In that light of the matter, we are inclined to the impose the conditions on the registration.",

74. It is a settled law the jurisdiction provided under section 57 which is in pari materia to section 56 of the old Trade and Merchandise Marks Act of,

1958 is based on public interest and the duty of the cancellation tribunal is act in interest of the purity of the register as against the provision of section,

47 which is in the nature of private interest. This has been observed by Supreme Court in the case of Hardie Trading Ltd. v. Addisons Paints &,

Chemicals Ltd., (2003) 11 SCC 92 : 2003 (27) PTC 241 (SC) wherein Hon'ble Ruma Pal J observed as under:",

30. The phrase ""person aggrieved"" is a common enough statutory precondition for a valid complaint or appeal. The phrase has been variously",

construed depending on the context in which it occurs. Three sections viz. Sections 46, 56 and 69 of the Act contain the phrase. Section 46 deals with",

the removal of a registered trade mark from the Register on the ground of non-use. This section presupposes that the registration which was validly,

made is liable to be taken off by subsequent non-user. Section 56 on the other hand deals with situations where the initial registration should not have,

been or was incorrectly made. The situations covered by this section include: (a) the contravention or failure to observe a condition for registration; (b),

the absence of an entry; (c) an entry made without sufficient cause; (d) a wrong entry; and (e) any error or defect in the entry. Such type of actions,

are commenced for the ""purity of the Register"" which it is in public interest to maintain.",

(Emphasis Supplied),

The statement of law laid down in the case of Hardie Trading (supra) was further reaffirmed by the Supreme Court in the case of Kabushiki Kaisha,

Toshiba v. Tosiba appliances, (2008) 37 PTC (SC).",

75. Likewise, the violation of provisions of section 9(1) which are in the nature of signs and indications that may serve as geographical origin of the",

goods either in present or in future is aimed at protecting public interest with the larger public policy, that the said signs and indications are freely",

available to all and should not be reserved for any undertaking alone, (ECJ view on the said point while interpreting pari materia provision of Article",

3(1) in the case of ECJ at para 25 of the report as analyzed above). Accordingly, the interest of the public is required to be protected vis a vis the",

private interest of the proprietor.,

76. We have already come to the conclusion that the evidence in the present case is not persuasive enough to allow us to reserve the word singularly,

for the respondent alone and our special reasons recorded above are evocative of the said view. However, just to recapitulate, the class of public who",

are having connection in the minds or can establish future connection in their mind with respect territorial origin of gin by using the word Goa is very,

widespread and diverse. The said class of persons include:,

a) Goa based distilleries who are currently manufacturing and selling their alcoholic beverages by using the names containing the expression Goa/Goan,

as one of the feature of the brand name. The same is applicable for future distilleries operating in Goa as well.,

b) The manufacturers in India and in other countries who are using the composite marks and marks containing the expression GOA prior to that of the,

respondent and/or registered and using the marks for their alcoholic beverages.,

c) The public in general which normally associates beach drinks like Gin and tonic water which is the idea conveyed by Gin and Lime as that of the,

respondent label with Goa only.,

d) The international manufacturers who have tendency to adopt the names of the cities as a composite part of their trade marks to pay homage to the,

territory of India as an origin of gin and tonic water.,

e) The proprietors and manufacturers of Gin who are new entrants in Goa and hailing Goa as land of homegrown Gin and their possibility of using,

GOA as part of their brand name in some way or other in a dissimilar manner than that of the respondent so far as get up part is concerned.,

f) Public confusion in their minds by giving a registration of the GOA word per se to a single entity like respondent herein which will give unnecessary,

edge to the respondent vis a vis other manufacturers in the market when aim of the all was to associate their products by portraying that they are,

emanated from geographical region of Goa.,

77. For all the reasons, the interest of public in the present case is overwhelming and outweighing which is compelling enough for this tribunal to lean",

towards the view relating to imposition of condition that ""Registration of the label will not exclusivity of the Word Goa"" as against holding that the word",

per se GOA can exclusively used by the respondent to the exclusion of others. This will also free the bona fide traders who are using GOA as a part,

of their label in respect of different goods like water, beer, whiskeys etc from the trammels of the oppositions which the respondent has instituted even",

though in all other respects the marks as a whole are different. Further, the imposition of this condition and direction will be in the interest of the purity",

of the register as it will make the practice of the trade marks office more consistent and will not give unnecessary exaggerated monopoly to the,

proprietor by reserving the familiar geographical name only to one entity.,

78. Lastly, There are judgments relied upon by the parties wherein the judgments cited by the applicant are mostly, no doubt, related old law which",

have been distinguished by the respondent to some extent. Likewise, the judgments are relied upon by the respondent wherein geographical names are",

allowed to be registered. All these judgments are not discussed at length in as much as the enquiry in each case is dependent upon the assessment of,

evidence with respect to ability of the geographical name serving as a origin of the category of the goods. The landmark judgment relied upon by the,

respondent to urge that there is a change in law decided by ECJ in the case of Windsurfing (supra) has been discussed at great length and the,

conclusions and guidelines passed therein are analyzed and reaffirmed and assessment has been made on the overall assessment of the geographical,

name as per the parameters laid down in Windsurfing (supra) and also legal factors emerging from the scheme of the Trade Marks Act, 1999.",

Therefore, the rest of the judgments which are based on more or less assessment of the evidence are factual in character and are distinguishable on",

the basis of the evidence available in those cases. The judgment passed in the case of Windsurfing case has also been approved by the courts in India,

including Bombay High Court in the case of Pidilite Industries Ltd. and Anr. v. Vilas Nemichand Jain, : 2015 (64) PTC 185 (Bom). In any case, the",

judgment is Windsurfing (supra) is passed interpreting pari materia provision has direct bearing to the interpretation of the provision of section 9(1)(b),

involved in the present case.,

Accordingly, We hereby pass the following directions:",

a) ORA No. 271 & 227/2015 are partly allowed to the extent that the impugned registration Nos. 628446 & 629643 in class = 33 are put to the,

condition that the registration of the label mark shall not give any exclusivity of the word GOA only. The respondent No. 2 shall amend the register in,

relation to the above mentioned registered trademarks of the respondent No. 1 forthwith.,

b) The respondent No. 2 is directed to issue conditions in accordance with directions contained in this judgments for all matters/applications which are,

considered by the trade mark office in respect of goods relating to alcoholic beverages after passing of this judgment relating to the labels and word,

marks wherein the word GOA forms one of the feature.,