1. This is an application from the decision of the Deputy Registrar of Trade Mark dated 14th of May, 1968 whereby the Deputy Registrar has
rejected the application by the appellant for registration in Part A of the Register of a trade mark consisting of the mark ""Jidi"" in Clause 5, in
respect of ""medicinal preparations"". Without advertising the said application on the objection of the registry the application for registration was
rejected by the Deputy Registrar u/s 18(4) of the Trade & Merchandise Marks Act, 1958. The said subsection of Section 18 authorizes the
Registrar to refuse an application subject to the provisions of the Act. The Deputy Registrar was of the view that the expression ""Jidi"" was
phonetically equivalent to the letters ""G. D."", and as such was not registrable except upon evidence of distinctiveness and as according to the
Deputy Registrar the mark was used only for a few months no evidence of distinctiveness was possible. The Deputy Registrar was of the view that
as the mark was phonetically equivalent to the letters ""G.D."" was not considered to be prima facie adopted to distinguish except upon proof of the
distinctiveness, which according to the Deputy Registrar was not there. On behalf of the appellant reliance was placed on clause (b) of sub-section
(5) of Section 9 of the Act. The said sub-section reads as follows :-
In determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which :-
(c) a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid, and
(d) by reason of the use of the trade mark or any other circumstances, the trade mark is in fact so adopted to distinguish or is in fact capable of
distinguishing as aforesaid.
2. The appellant contended that there were other circumstances or special circumstances and in support of this contention reliance was placed on
the registered trademarks nos. 14609 and 149774. These two trade marks were registered in favour of the appellant, the first one being since
1943 and the second one since 1951. The Registered Trade Mark No. 14609 consisted of the word ""ASMOLIN"" in bold letters appearing at the
center of the mark with a device of an elephant head appearing at the top thereof. From the tusk of the elephant hangs a small board with the
letters ""G.D."" appearing thereon according to the Deputy Registrar in an insignificant manner. I have looked at the mark, the letters are very small.
The Deputy Registrar felt that the letters ""G.D."" appeared on the mark in such small dimensions that no special importance could be attached to
them, and therefore the said mark was registered with the claim ""G.D."" without any disclaimer in respect of the fact that there was no evidence of
distinctiveness. Appellant had claimed before the Deputy Registrar that as no disclaimer was required and as the letters ""G.D."" was included in the
said Registered Trade Mark 14609 in favour of the appellant, the appellant was entitled to the exclusive use of the said two letters. In this
connection the Deputy Registrar has relied on sub-section (1) & (2) of Section 15 of the Act which is to the following effect :-
(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the
whole and the part as separate trade marks.
(2) Each such separate trade mark shall have all the conditions applying to, and have all the incidents of, an independent trade mark.
The Deputy Registrar rejected the claim of the appellant and observed: -
In the first place it is not the registration of the letters ""G.D."" but of the expression ""JIDI"" which the Applicants seek. In obtaining registration of
their Trade Mark No. 14609, the Applicants had not furnished any evidence of distinctiveness for the letters ""G.D."" Therefore, if the Applicants
now come out with a claim for registration of the letters ""G.D."", it would be mandatory upon them to produce satisfactory evidence of
distinctiveness for them. The same principle applies to be question of the registration ""JIDI"". As the letters ""G.D."" have not been registered by
themselves on satisfactory evidence of the distinctiveness the Applicants'' contention that the expression ""JIDI"" has become distinctive on the basis
of the alleged distinctiveness of the letters ""G.D."" is not acceptable and fails.
3. The appellant also claimed that since 1957 up to 1964 the appellants were the owners of the following marks with the prefix ""Jidi"".
Trade Mark Description of the mark goods No.
178539 Word ""JIDITHALIN"" Antibiotic preparation of
treatment of amoebic and
Registered bacillary dysentry.
189561 Word ""JIDMYCIN"" - do - -do-
196737 Word ""JIDIFERIN"" Pharmaceutical preparations
containing Iron for human
use.
225612 Word ""JIDIPLEX"" Medical preparations.
Application
No.
227654 Word ""JIDIPYRIN"" - do - - do -
227655 Pending Word "" JIDIVIT"" - do - - do -
4. Before the Deputy Registrar on behalf of the appellant reliance was placed on the ""Vezeet"" case reported in 22 R. P. C. but the Deputy
Registrar mainly relied on the ""Parker-knoll"" Case (1961) R. P. C. 346 and (1962) R. P. C. 265. The Deputy Registrar held, inter alia, as follows
:-
The mere fact that the Applicants'' marks contained the same prefix ""Jidi"" cannot be deemed to be special circumstances enabling them to register
that prefix per se, when that prefix is the phonetic equivalent of the letters ""G.D."" and when the alleged used thereof prior to the date of the
application for registration thereof is too meager and short for the prefix to have acquired distinctiveness or become capable of distinguishing. The
two Registered Trade Marks Nos. 14609 and 149774 are both composite marks containing the letters ""G.D."" and the mere registration of those
marks does not give them an exclusive right to the use of the letters ""G.D."" per se or the prefix ""Jidi"" per se, which is the phonetic equivalent of
those letters as a separate mark by itself. The ""Vezeet"" Case is not much in point. The authority applicable to the facts of the present case is the
Parker-Knoll"" Case, wherein despite the registration of ""Parker-Knoll"" by the Registered Proprietors, the Register was rectified in respect of the
trade mark consisting them, by removing that mark from the Register as it had not acquired distinctiveness on the date of the registration and had
never been used as a trade mark by itself. Inasmuch as the Applicants had never used by itself as a separate and distinctive mark the expression
Jidi"" except form January 1965, there can be little or no evidence of distinctiveness in respect of the application for registration filed by them on
15th September 1965. The user of the mark till that date being about 8 and 1/2 months (even this user is not proved) is too insufficient for the
goods bearing the mark to have been introduced in most of the markets in India, much less in the mark to have acquired distinctiveness or to have
become capable of distinguishing. Phonetic equivalents of mere letters are treated on the same footing as those letters and are not registrable,
whether in part A or Part B of the Register, except on the evidence establishing that the mark has acquired distinctiveness or become capable of
distinguishing by long and extensive prior to the date of the application"".
5. Accordingly, u/s 18 (4) of the Act the application was refused because of the bar u/s 9 of the Act. It is indisputable that u/s 9 of the Act. It is
indisputable that under the Act the Registrar has discretion to grant or no to grant registration and provided that such decision or discretion has
been exercised on valid grounds the Courts do not interfere with such discretion or decision. I have already set out sub-section (5) of section 9 of
the Act, sub-section (1) to (4) of section 9 of the Act provide as follows :-
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 the company, individual or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in this 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;
(e) any other distinctive mark.
(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.
(3) For the purposes of this Act, the expression ""distinctive"" in relation to the goods in respect of which a trade mark is proposed to be registered,
means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the
case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to
use within the extent of the registration.
(4) A trade mark shall not be registered in Part B of the register unless the trade mark in relation to the goods in respect of which it is proposed to
be registered is distinctive, or is not distinctive but is capable of distinguishing goods with which the proprietor of a trade mark is or may be
connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is
proposed to be registered subject to limitations, in relation to use within the extent of the registration.
6. The main question involved in this appeal, is, whether the Deputy Registrar has correctly applied the tests for determining ''other circumstances''
in clause (b) of sub-section (5) of section 9 of the Act. The point that perhaps requires emphasis is that user of the trademark is not synonymous
with ''other circumstances''. Bearing the above point it is necessary to examine several decisions where this aspect has been examined. In the case
of The Imperial Tobacco Co. of India Ltd. Vs. The Registrar of Trade Marks and Another, the Court observed as follows :-
In determining whether the mark is distinctive or capable of distinguishing the Tribunal shall have regard if the mark is inherently capable of
distinguishing as aforesaid. If, not, the Tribunal will further examine if by reason of use or other circumstances, the trademark has in fact become
distinctive (as adapted to distinguish) or capable of distinguishing as aforesaid. All the same the Tribunal will refuse registration in respect of either
part of the register if the trademark is inherently incapable of being distinctive or inherently incapable of being distinguishing the goods of the
applicants from others. Such reasons obviously are the disabilities violating the provision of Cls. (c), (d) and (e) of sub-s. (1) of S. 9 of the Act
which again may not be exhaustive. The courts of law have further imposed the condition that no trade mark should be allowed to be registered
which may hamper or embarrass the traders or trade now or in future in respect of the place or country in which it is proposed to be registered.
At page 421 of the report the Court observed as follows :-
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 trademarks or other circumstances. There is thus actually no question of exclusion of one clause by another in
sub-s (5) of S. 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.
7. It is, secondly, important to bear in mind that though the word ""Jidi"" is phonetically similar (if not equivalent in Indian pronunciation), and though
it is not an invented word it can be considered to be a ""coined word"" which has formed part of the registered trade mark of the appellant in respect
of similar ""medicinal preparation"" registered during 1957 to 1964. In this connection reference may be made to the decision in the case of
Flowstacka"" trade mark (1968) R.P.C. 66 where an application to register the mark FLOWSTACKA in relation to machines for lifting loading
and transporting goods was refused by the Registrar on the ground that the mark had a direct reference to the character and quality of the goods,
although the indicated that he would be prepared to advertise the mark before acceptance for registration in Part B of the register. On appeal to
the High Court the Registrar did not object to the applicants'' filing evidence of the extent of their use of other marks beginning with the letters
FLOW, and of their reputation in the trade, which showed that the applicants'' range of goods bearing a variety of marks beginning with FLOW
were very well known in the mechanical handling art. It was held :
(1) That although the word FLOWSTACKA was rightly regarded by the Registrar as a combination of the words ""flow"" and ""stacker"", the
evidence showed that many people in industry if confronted with the mark would have associated in with the applicants'' goods. But to some
people the mark would be descriptive of the function of the machine, and therefore the Registrar had rightly found that the mark should be rejected
u/s 9(1) (d) because it had a direct reference to the character and quality of the goods.
(2) That the mark, nevertheless, qualified for registration in part A of the register as being, on the evidence, adapted to distinguish the applicants''
goods within section 9(1)(e). Applying the recognized test of inquiring whether other traders could without improper motive desire to use the mark,
or one resembling it, it appeared in the present case, taking into account the applicants'' numerous registrations of marks with the FLOW prefix,
that such improper motive would be suspected if any other traders sought to use a similar mark for their goods. Accordingly the appeal was
allowed.
Mr. Justice Cross at pages 72 & 73 of the report observed as follows :-
The word FLOWSTACKA, although not an invented word and though as I assume, referring directly to the character of the goods, is not an
ordinary English word or an ordinary combination of two English words. It is a ""coined"" word, just as was the word TRAKGRIP in Dunlop
Rubber Company''s Application (1942) 59 R.P.C. 134. TRACKGRIP was not an invented word and it clearly referred to the character and
quality of the goods in question, namely, the power of holding the surface of the road or track, which the tyres in question were supposed to
possess. Nevertheless the judge held that the word TRAKGRIP was distinctive and not merely descriptive. The test which he applied was that
suggested by Lord Parker in Du Cross Ltd''s Application (1913) 30 R.P.C. 660, namely, 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.
Applying that test, I think that this mark is inherently adapted to distinguish the applicants'' goods. To my mind, FLOWSTACKA is not a mark
which other traders would be likely in the ordinary course of their business and without improper motive to use in connection with machines for
handling goods. Indeed, having regard to the number of FLOW marks already used by the applicants, I should suspect that any manufacturer who
wished to use the word was actuated by an improper motive.
Turing to sub-section (3) (b) there was, as I have said, no evidence before the Registrar of any user of this mark by the applicants before the date
of application. Were then there any other circumstances tending to show that the mark was in fact adapted to distinguish the applicants'' goods"" To
my mind, the fact that the applicants had been for a number of years before the application to register this mark using many other marks with the
FLOW prefix in connection with other goods of a broadly similar character is a circumstance which tends to show that this FLOW mark is in fact
adapted to distinguish the goods of the applicants in respect of which they seek to register it.
In the result, therefore, I shall direct the Registrar to proceed with the registration"".
8. In the case of British Petroleum Co. Ltd. vs. Europeon Petroleum Distributors Ltd. (1968) R.P.C. 54 the plaintiffs had marketed petrol and oils
under five registered trade marks all comprising the letters B.P. with varying surrounds, and a sixth trade mark for the letters B. P. alone. By this
action they alleged infringement of these registered trademarks by the defendants, distributors of cut-price petrol under the mark E.P. The
defendants in their counter claim attacked the validity of the plaintiffs'' sixth mark (the other marks, registered for more than seven years, being
protected by section 13 of the Trade Marks Act, 1938). They contended, that the mark was not distinctive and should never have been registered,
and that it was deceptive as suggesting a connection in the course of trade between the proprietors of the mark and the petrol sold under it,
whereas the petrol sold under it, whereas the petrol was sold by an associate company of the plaintiffs, and although the other five marks were the
subject of a registered user agreement, the sixth was not. It was held that (1) that a two-letter mark could be registered on proof of user for a
substantial time over the whole country, which proof had doubtless been given at the time of the registration of the first B.P. mark. Referring to
Kerly on Trade Marks (9th edn. (1966), paragraph 283) where it was said that since the W & G. case, two-letter marks are not registered the
learned Judge observed that as a mere matter of fact that was not so; but further the learned Judge was of the view that it was not right to say that
no two-letter mark ought ever to be registered. The learned Judge, further held that as there was a subsisting trade connection between the
plaintiffs and their associated companies, and the mark was in fact used under the same conditions and restrictions as were the marks which were
the subject of registered agreements, it was irrelevant that there was for some time no registered user agreement in respect of the sixth mark. It
was, further, held that for the determination of the issue of infringement u/s 4(1) it had to be decided whether the marks so nearly resembled each
other as to be likely to deceive or cause confusion, it being irrelevant here, in contrast to an action for passing off, whether or not the defendant
accompanied his user of the defendant accompanied his user of the offending mark with other material to indicate that there was no trade
connection between his goods and the registered proprietor. In the circumstances of the retail petrol trade the likelihood of confusion appeared
remote, there was no evidence of confusion, and accordingly the action for infringement, as well as the counterclaim for rectification were
dismissed.
9. It was observed by Mr. Justice Cross at page 62 of the report as follows :-
In considering whether or not the mark is ""inherently adapted"" to distinguish the goods it is relevant to ask oneself whether and to what extent if the
proposed mark was not given a statutory protection, other producers of the goods would be likely in the normal course of events to wish to use
the mark themselves. In the case of a mark consisting simply of letters of the alphabet the answer to this question must depend to a large extent on
the number of letters and the parity of the combination. In the ""W & G."" case (du Cros'' Application (1913) 30 R. P. C. 660) decided under the
Act of 1905, the House of Lords considered the question in relation to a two-letter mark consisting of two common initial letters W. & G. There
the user was proved for some five years, but only in the London area. Registration was refused, but as I read the Judgment and in particular the
speech of Lord Parker that was not because the letters W. & G. were thought to be so inherently unadapted to distinguish the goods in question
(taxi cabs) as to make registration in principle impossible, but because the user proved, especially as regards area, was thought to be enough to
justify registration in a case where the inherent distinctiveness of the mark was so slight. In Kerly on Trade Marks (9th Edn. (1966), paragraph
283) it is said that since the W. & G. case, two-letter marks are not registered. This case shows that as a mere matter of fact that is not so; but
further I do not think that it is right to say that no two-letter mark ought ever to be registered. Of course, if the letters constitute a common
combination, as they do in this case, the mark ought only to be registered on proof of user for a substantial time over the whole country, but no
doubt proof of such user was given when the first B. P. mark was registered in 1921.
10. Leaving aside for the present the two cases namely the Vezeet''s Case and the Parker-Knoll Case, which I shall discuss later, it may be
relevant to discuss the other cases to which my attention was drawn. My attention was drawn to the decision in the case of the Registrar of Trade
Marks v. W. & G. Du Cros. Ltd. (1913) A.C. 624. There Motor cab proprietors in London applied for registration as trade marks for motor
vehicles of two marks used by them for about three years on and in connection with their motor cabs in London. One mark consisted of the letters
W"" and ""G"" (joined by the copulative symbol ""&"") written in a running hand with a distorted tail to the ""G"" ending up under the ""W"". The other
mark consisted of ""W & G"" in ordinary block letters. These marks had become in fact distinctive in the London district but not elsewhere. The
Registrar refused the applications on appeal it was held that the marks were not distinctive within the meaning of the word in s.9, sub-s, 5, of the
Trade Marks Act, 1905 and were therefore not registrable.
11. In that case at page 634 of the report Lord Parker observed as follows :-
My Lords, if either mark be registrable, it must be because it is a distinctive mark within the meaning of s.9, sub-s, 5, of the Act. ""Distinctive"" is
defined as meaning ""adapted to distinguish the goods of applicant for registration from the goods of other persons."" This definition is found for the
first time in the Act of 1905, but the word all the earlier acts in the sense of ""adapted to distinguish"". The difficulty lies in finding the right criterion by
which to determine whether a proposed mark is to be considered on the hypothesis that it will be admitted to registration, and in conjunction with
the monopoly of user which such registration confers, I can imagine no mark which would not be adapted to distinguish the goods of the proprietor
from those of other persons. Nothing could be better adapted for this purpose than some letter or combination of letters, which no one else was at
liberty to use. In my opinion, in order to determine whether a mark is distinctive it must be considered quite apart from the effects of registration.
The question, therefore, is a trademark, is likely to become actually distinctive of the goods of the person so using it. The applicant for registration
in effect says. ""I intend to use this mark as a trade mark, i.e., for the purpose of distinguishing my goods form the goods of other persons,"" and the
Registrar or the Court has to determine before the mark be admitted to registration whether it is of such kind that the applicant, quite apart from
the effects of registration is likely or unlikely to attain the object he has in view. The applicant''s chance of success in this respect must, I think,
largely depend upon 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. It is apparent from the history of trade marks in this
country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the
Trade Marks Acts a monopoly in what others may legitimately desire to use. For example, names (unless represented in some special manner) and
descriptive words have never been recognized as appropriate for use as trademark. It is true that they became registrable for the first time under
the Act of 1905, but only if distinctive, and they cannot be deemed distinctive without an order of the Board of Trade or the Court. This
registration does not apply to marks consisting of a letter or combination of letters, but before such a mark be accepted the Registrar or the Court
has to be satisfied that it is adapted to distinguish the goods of the others. It need not necessarily be so adapted, and whether it is or is not so
adapted appears to depend largely on whether other traders are or are not likely to desire in the ordinary course of their business to make use in
connection with their goods of the particular letter or letters constituting the mark.
12. Though the aforesaid observations are relevant and instructive the facts of the case before the House of Lords were entirely different. In the
case of In the Matter of Garrett''s Applications 33 R. P. C. 117 the facts were as follows :-
In 1898 G., trading as Osborne, Garrett & Co., registered ""Ogee"" as a Trade Mark in Class 12 of cullery and edged tools. In 1903 he registered
the same Mark in Class 2 for chemical substances used for sanitary purposes, and in Class 8 for razors, scissors, etc. In 1915 he applied to
register ""Ogee"" as a Trade Mark in Class 3 for chemical substances used in pharmacy, in Class 48 for perfumery, and in Class 50 for hair frames
and miscellaneous articles. The Application was refused by the Registrar of Trade Marks, who held that the mark was a mere spelling out of the
letters ""O. G."", the initials of the Applicant''s trade name, and that letters were not registrable as distinctive marks. He refused registration on this
ground u/s 9 of the Trade Marks Act 1905, as well as in the discretion vested in the Registrar. ""Ogee"" is a word found in Dictionaries, and is a
well-known term in architecture and carpentry, meaning as moulding with a double-curved line. The Applicant appealed to the Court. It was held,
that ""Ogee"" prima facie meant the dictionary word; and that having regard to the long use of the word by the applicant, and his registration of it in
other classes, the present registration ought to be allowed on the Applicant disclaiming any exclusive right to the letters ""O and G"" or either of them
by virtue of the present registration. From this decision the Registrar appealed to the Court of Appeal and it was held that the Registrar has a
discretion under Sub-section (2) of Section 12 of the Trade Marks Act 1905 to refuse or to accept an application t register; that the discretion
was now to be exercised to the Court, but the discretion of the Registrar would not be lightly interfered with, and that his discretion had been
rightly exercised; that the mark in the present case appealed to the car as well as to the eye, and therefore confusion might arise; and that the
disclaimer did not improve the Applicant''s position.
13. At page 122 of the report Lord Cozens Hardy M. R. observed as follows :-
A question of general importance was argued before us, namely whether in a case like this the Registrar has any discretion. The mark falls u/s 9,
paragraph 4, as a word having no direct reference to the character or quality of the goods, and it is argued that the Registrar is bound to accept the
application unless the case falls within the terms of Section 11 or Section 19. In my opinion this contention ought not to prevail. There is no
absolute right to registration of a Trade Mark. Section 12, Sub-section 2, is express: ""Subject to the provisions of this Act the Registrar may refuse
such application or may accept it absolutely or subject to conditions, amendments or modifications."" The words are clear. The Registrar must not
disregard Section 9, which defines the essential particulars of a registrable Trade Mark, nor must be disregard the prohibitory Sections 11 and 19.
But subject to these limitations he has a discretion either to refuse or to accept; this is my view apart from authority.
14. Phillimore L. J., at page 126 & 127 of the report observed as follows :-
It appears to me, therefore that the Registrar legitimately exercises his discretion when he considers, in an application made under paragraph 4,
whether or no the mark is so distinctive that it will not only escape the prohibition of Section 11, but be in fact not likely to give occasion to
confusion in the case of another trader using, as he legitimately may, his own initials. This leaves one further division of the first point to consider. In
doing so, should we have regard to the ear as well as to the eye"" That were a proposed Trade Mark consists of words descriptive of a device
which has been already registered this may be a good ground for refusing registration or even for expunging a Trade Mark already registered, is
shown by the ""Red Star"" case (11 R. P. C. 142) and the ""Golden Fan"" case (13 R. P. C. 288) which were both decisions of this Court. Whether a
word the sound of which also represents the sounds of the initials is within this principle is more disputable. In the ""Vezet"" case (22 R. P. C. 568)
decided in 1905 it appeared that the Dutch pronunciation of the letters ""V. Z."" would be ""Ve-Zet"". But in the circumstances of the case, which
were somewhat special, and having regard to the fact that the sound was a Dutch and not an English one. Lord justice Warrington (then Mr.
Justice Warrington) overruled the Registrar and allowed the registration, taking a disclaimer or condition similar to that which was offered in the
present case, namely, that the applicants did not claim to prevent the use of initials. I think that all that can be said upon this subject is that the
similarity to the ear may always be a ground for the exercise of discretion in the direction of refusal.
Now I come to the second point, which was raised before us. Whether, in the exercise of our discretion, we should allow this Application for
registration to proceed. The case is very special one. There are few words, which correspond with special initials. There are more combinations of
words, which would correspond. Thus : ""Double you and gee;"" ""Doubled you and see"". Or some sentences with the pronoun. ""I"" such as ""I see"",
might be treated indifferently as words, or as the spelling out of initials. I do not think that it ought to matter that the word happens to correspond
with the initials of the applicant''s firm. If his firm had been ""Smith & Robinson"" the same condition ought, I think, to apply. No doubt the fact that
the word does spell the initials the Applicant''s firm may have opened the eyes of the Registrar; still I think that is immaterial. I have been in
considerable doubt on this question of discretion. The Applicant''s word is a real though rare word. He has the judgment of Mr. Justice Sargant in
his favour, and he has had this very Trade Mark registered in other Classes. On the other hand, this is a matter of practical experience where the
judgment of the Registrar is of great weight. It was a mistake, I think, of Mr. Justice Sargant to say that the Registrar had misdirected himself. On
the whole I rather submit my self in this matter to the judgment of the other members of the Court, who have had greater experience in these cases,
and I concur with them in allowing this appeal"".
15. In the case of ""Esso"" Trade Mark (1972) R.P.C. 283 there was an application made to Register in respect of types for vehicle wheels and
parts and fittings for the land vehicles and watercraft, the letters ""ESSO"" within an oval border, the ""E"" being in a form of script and the mark being
limited to specified colors. There being no use of the mark on the goods applied for, the Registrar proceeded on the basis that he had only a prima
facie case to consider, although there were already on the register, in respect of a fairly wide range of goods, a larger number of trade marks
consisting of ""ESSO"" within an oval border, some of them in the colors of the mark applied for. The Registrar refused registration on the basis that,
inasmuch as the ear as well as the eye had to be considered, the application was in effect one to register ""S"" and ""O"", and that those letters were
not inherently capable of distinguishing. On appeal to the court the applicants argued that the mark applied for had an inherent capacity to
distinguish and also that the Registrar had been wrong in treating it as a prima facie case. They were allowed by the court to file evidence as to their
previous registrations and as to their extensive use of the mark ESSO for motor fuel and oil. It was held allowing the appeal in part, (1) that this
was a case where at least there was some inherent capacity to distinguish and in which there were other circumstances proper to be considered. It
was relevant to consider under other circumstances, in section 10 the undoubted extensive use of the trade mark ESSO for very many years prior
to the application in relation to certain classes of goods, notably motor fuels and lubricants and it was further held that the application should be
allowed to proceed so as to cover those categories of goods, falling within the specification of the application, that could on a reasonable basis be
said to be fairly closely allied to the pre-existing fields of he applicants'' activities. Having regard to the evidence, the application was allowed to
proceed in respect of tyres for vehicle wheels.
16. At pages 289 and 290 of the report Mr. Justice Whit ford observed as follows :-
Now this being a ""B"" mark, the question to be considered is whether it is capable in relation t the goods which I have specified of distinguishing the
goods of the applicants, and subsection 2 of section 10 days that, when this question is considered, regard must be had to the extent to which the
trade mark is (a) inherently capable of distinguishing and (b) by reason of use or other circumstances in fact capable of distinguishing. The hearing
officer came to the conclusion that, inasmuch as the ear as well as the eye had got to be considered, this was a case which consisted essentially of
what could be considered as being an application to register the letters ""S"" and ""O"" and that these letters were not inherently capable of
distinguishing, and that might on one view of the matter have been enough to decide this case. I say that because counsel for the applicants
proceeded in this appeal upon this basis, that, if one applies the reasoning of the House of Lords in Yorkshire Copper Works Ltd.''s Application
(1954) 71 R. P. C. 150, which was an application u/s 9 of the Act to register a trade mark YORKSHIRE, it is plaint that, if one is to succeed,
there must at least be some inherent capacity to distinguish, and, unless there is, there is no point in going forward further to consider whether by
reason of use or special circumstances the mark is capable of distinguishing or, in the terms of section 9, adapted to distinguish. It appears to have
been accepted in the House of Lords when the ""Yorkshire"" case was argued that the case would have been the same if the application in that case
had been an application u/s 10, and YORKSHIRE case was considered and decided upon the assumption that the word was established by
evidence as being 100 percent distinctive in fact of that particular applicant''s goods. There had been a long use in that case, so that, if one merely
looked at the question of use, then the conclusion must be that the mark was adapted to distinguish, but it was held, being a geographical name,
that it was not inherently adapted to this end, and this is the reason why it was refused.
I have come to the conclusion in this particular case that there is a certain inconsistency so far as this ground of objection is concerned between the
finding which has been made as to whether the mark is inherently capable and the already existing registrations of the mark. These include both ""B
and ""A"" registrations, and if in fact the decision of the hearing officer in the case under review were right, it must I think follow so far as the earlier
registrations are concerned that they ought never to have been admitted, because none of them could be any more inherently capable of
distinguishing than the present application; not one of them was inherently adapted to distinguish.
Over and beyond that of course it may be possible that none of the other marks should ever have been admitted to registration. If one merely
considers the mark, I take the view, which was quite plainly I think taken by all judges who considered the W & G, case in the OGEE case to
which I have already referred, that that case does not lay down any rigid rule which would lead to this conclusion, that marks consisting of two
letters can never be registered. There are of course substantial differences between the mark that was being considered in the W & G. case, which
was the letters simplicities conjoined by the ampersand, and the present case, which consists of what could be described as a four-letter word, if I
may be permitted to use the expression, which may or may not be taken in speech to be no more than the equivalent of the two letters ""SO"". The
House of Lords in the W. & G. Application were basically concerned with the difficulty that might arise by reason of the fact that the use of these
initials by persons who had names with these initials, and they instanced, for example, Mr. William Green, or a firm such as Weston and Gibbs,
might be precluded by the registration sought.
17. So far as any question of general principle is concerned, Lord Parker observed at page 671, line 45 :
In my opinion, in order to determine whether a mark is distinctive it must be considered quite apart from the effects of registration. The question,
therefore, is whether the mark itself, if used as a trademark, is likely to become actually distinctive of the goods of the persons so using it. The
applicant for registration in effect says, ''I intend to use this mark as a trade mark, i.e. for the purpose of distinguishing my goods from the goods of
other persons'', and the Registrar or the court has to determine, before the mark be admitted to registration, whether it is of such a kind that the
applicant, quite apart from the effects of registration, is likely or unlikely to attain the object he has in view. The applicant''s chance of success in
this respect must, I think, largely depend upon 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.
18. Thereafter discussing the evidence at page 292 of the report the learned Judge observed as follows :-
Having concluded, as I have, that this is a case where at least there is some inherent capacity to distinguish, I have also concluded that this is a case
in which there are other circumstances proper to be considered which would appear to me to point to the conclusion that this application for
registration should in part at least be allowed to proceed.
I can well understand that the Officer who acted for the Registrar at the hearing come to the conclusion which he in fact reached upon a wholly
different basis of presentation to the basis which has been argued before me, and I have unfortunately, therefore, not had the opportunity of his
views upon the case presented as it was presented to me. It was, however, indicated that it would be desirable both from the point of view of the
applicants and the Registrar that the matter should be dealt with upon the basis on which it was argued in this courts.
The conclusion to my mind must be this, that the present application should be allowed to proceed so as to cover those categories of goods failing
within the specification of the present application which can on a reasonable basis be said to be fairly closely allied to the pre-existing fields of the
applicants'' activities.
19. It now remains for me to discuss the two cases, which have been elaborately discussed by the Deputy Registrar. In the case of In the matter of
Verschure and Zoon''s Application to Register a Trade Mark, 22 R.P.C. at page 568 of the facts were as follows :-
A firm of Dutch cheese merchants, carrying on business in London applied to register the word ""Vezet"" as a trademark for cheese. The letters ""V
Z"" were the initials of the firm name, and in Dutch would be pronounced ""Vee Zet""; and the Comptroller refused registration on the ground that the
word was only the equivalent of the Dutch letters. The Applicants were the registered proprietors of a trademark consisting of the letters ""V Z"",
registered as an old mark. It was held that, in view of the exclusive rights conferred on the Applicants by their old mark, the objections to the mark
ought not to prevail; and that the Application should be proceeded with, a condition, however, being made that the Applicants should not claim by
virtue of the registration of the word ""Vezet"" the right to restrain the use of the letters ""V Z"".
20. Counsel for the applicant as it appear at page 572 submitted as follows and Mr. Justice Warrington observed at page 572 of the report in
respect thereof as follows :-
Parker. - The Court has power to make condition as to the registration. It would obviate my objection if your Lordship said that this Mark should
only be registered on condition that the Applicants do not claim by virtue of the registration of this mark to prevent the use of ""V Z"". That should
show their bona fides, and it would obviate my objection. Of course, that would leave them with what rights they have under the old Mark. We so
often find, and it might be - although I am not saying so in this case, because I do not know, but it might be - that they were only applying for this
simply and solely because they knew they could not enforce the other.
WARRINGTON, J. - They are not to claim under this registration, but it will not affect their rights under the other registration. I think that is quite
right and reasonable.
21. The Deputy Registrar came to the conclusion that ""Vezet"" case does not apply to the instant case. I will discuss the several reasons indicated
by the Deputy Registrar for his conclusion.
(1) The Deputy Registrar has opined that the vezeet''s case was decided in 1905 by a learned single Judge while the ""Parker-Knoll"" case was
decided in 1961 by the Court of Appeal in England. I am unable to attach much significance on this fact on which emphasis has been laid by the
Deputy Registrar. Neither the decision of the learned single Judge nor the decision of the Court of Appeal in England is of the Court of Appeal in
England is of any binding force on us. But the observations in the said decisions so far as they are material and relevant to our present case are
entitled to highest respect and consideration. From that point of view in my opinion the ""Vezet"" Case is more appropriate than the facts involved in
Parker-Knoll"" Case. The Deputy Registrar has also emphasized that the law followed in Vezet''s case was based on the U. K. Trade Mark Act
of 1888 whereas the law applied in Parker-Knoll case is based in 1938 U. K. Act and the Deputy Registrar thought that the provisions of the later
Act were more akin to the present Indian Trade Marks Act than the old U. K. Act of 1888. So far as the principles to be applied in deciding the
controversy in this case and the claim of the appellant involved, in my opinion the difference in the provisions of two respective Acts in England
referred to by the Deputy Registrar is not of any significance. Therefore, this aspect of the reasoning of the Deputy Registrar cannot, in my opinion,
by supported.
(2) The Deputy Registrar has also observed that the word ""VEZET"" was regarded as an invented word of a non-descriptive word whereas in the
present case the applicants themselves had conceded that ""JIDI"" was phonetically equivalent to ""G D"". - (See page 18, line 10 to 20 of the Paper
Book).
The Deputy Registrar on this aspect completely ignored the fact that the word ""JIDI"" even if it is not a ward of description or an invented word is
certainly a word which can be described to be a coined word. The Deputy Registrar has, further, observed that if the letters ""G. D."" by themselves
had been registered on evidence of distinctiveness then possibly the ""Vezet"" case might have been to the point in the instant case before me. The
Deputy Registrar on this aspect, completely, in my opinion ignore that the fact that Registered Trade Mark 149774 consisted of the name ""G.D. &
Co."" and that mark was accepted for registrar was of evidence of distinctiveness. The Deputy Registrar was of the opinion that the evidence in
respect of ""G. D. & Co."" could not be regarded as relevant for ""G.D."" much less for ""JIDI"". The fundamental error into which the Dy. Registrar fell
in my opinion, seems to be that in considering whether there are other circumstances as indicated in Clause (b) of Section 9 (5) of the Act, the
different items of evidence could not and should not be regarded piecemeal but should be considered in totality in conjunction with each other. I
agree with the Deputy Registrar in so far as he says that the registration of the name ""G. D. & Co."" by itself could not be regarded as sufficient
evidence of distinctiveness of the phonetically similar word ""JIDI"". But as I have indicated before, that factor could not and should not be taken
into consideration in isolation. On the other hand as apparent that the trade mark nos. 178539, 189561, 196737 and 225612 consisted in part at
least of the expression ""JIDI"" in respect of same or similar goods and these have been registered during the period 1957 to 1964 and were still
continuing to be on the register at the date when the present application of the appellant had been made. There were two other pending
applications in respect of similar or identical goods with the expression, which included party the word ""JIDI"" in the Application No. 227654 and
227655. As I have said before these by themselves taken separately would not perhaps have been evidence of distinctiveness of the word ""JIDI
as such, but taken in conjunction with the other factors enumerated before, in my opinion, these are sufficiently good evidence with any other
circumstances which require that the application of the applicant should be accepted and should proceed with the other process necessary for
requiring registration. The word ""V. Z."" had been registered and the Deputy Registrar assumed that the same must have been upon the proof of
distinctiveness. There was no material basis for that assumption.
22. For the reasons above I am unable to sustain the grounds upon which the Deputy Registrar based his rejection of the ""Vezet"" Case. The
Deputy Registrar has relied on the decision in the case of Parker-Knoll Limited 1962 R. P. C. 265. The decision of the Court of Appeal is,
however, reported in 1961 R. P. C. 346. There in a group of proceedings involving Parker-Knoll companies as proprietors of registered trade
marks ""Parker-Knoll"" and ""Knoll"", Mr. Justice Russell granted injunction to restrain infringement of trade mark and passing-off, holding that the
plaintiffs had a large and established trade in the United Kingdom under the name ""Parker-Knoll"" which was unique to them and the significant and
memorable part of that name being ""Knoll"". The learned Judge also refused to order the associated mark ""Knoll"" to by expunged. The defendants
thereupon appealed to the Court of Appeal. It was held by the Court of Appeal reversing the judgment of Mr. Justice Russell that use of a mark
was not use of all the words forming part of that mark, so as to enable those words to be registered as marks in use and the Court of Appeal,
further, held that section 30 of Trade Marks Act, 1938 applied to such words only after these words were registered. The plaintiffs extensively
used a mark ""Parker-Knoll"" and registered ""Knoll"" as an associated mark. According to the Court of Appeal ""Knoll"" being a surname and there
not having by user made of the same by the plaintiffs indicating distinctive of their goods it was entered in the Register without sufficient cause and
therefore should be ordered to be expunged. The Court of Appeal further held that an injunction to restrain infringement of a trade mark by a
Company might be properly qualified by the proviso provided that the order was not to interfere with any bona fide use of the defendants of their
full name or without the word ''LIMITED'' as provided in section 8 of the 1938 Act, the Court refused to make the declaration that the use of a
particular form of words made it clear that there was no infringement but a proper use of the defendants'' name. In that case one of the significant
factor which has to be noted as was observed by Lord Justice Upjohn at page 364 of the report that there was evidence by a number of persons
in the trade that the word ""Knoll"" meant the goods of the appellant in that case i.e. the original defendants. This in my opinion is a very significant
factor which has to be borne in mind especially the stage at which the Deputy Registrar in the instant case has refused to proceed with the
application for registration u/s 18 (4) of the present Act with which I am concerned in ignoring other circumstances as contemplated in section 9
(5) (b) of the Act. As I have mentioned before the Parker-Knoll case went up ultimately to the House of Lords and there the decision of the Court
of Appeal was sustained. According to me that controversy that arose in the Parker-Knoll case was in a slightly different context and the
observations of the Court of Appeal was sustained. According to me the controversy that arose in the Parker-Knoll case was in a slightly different
context and the observations of the Court of Appeal upon which the Deputy Registrar has relied must be under stood in that right.
23. As I have mentioned before the opinion of the Deputy Registrar is entitled to respect specially in view of his specialized knowledge of the trade
and should be departed from only upon cogent evidence. But for the reasons I have indicated before, I am of the opinion, that the Deputy
Registrar has proceeded on an erroneous basis and erroneous principle and therefore the decision of the Deputy Registrar cannot in this case be
sustained. The order of the Deputy Registrar rejecting the application u/s 18 (4) is therefore set aside and the Deputy Registrar is directed to
proceed with the consideration of the application in accordance with law and in accordance with the observations made in this judgment. Deputy
Registrar would be free to obtain from the applicant the disclaimer or undertaking in the like or in the manner that Mr. Justice Warrington imposed
in the case of In the matter of Verschure and Zoon''s Application to Register a Trade Mark 22 R. P. C. page 568 as indicated before.
24. The appeal, is allowed and the decision of the Deputy Registrar is set aside. The Deputy Registrar is directed to proceed with the application
of the applicant in accordance with law.
In the facts and circumstances of the case, however, the parties will pay and bear their own costs.
