Raghbir Singh, J
1. Appeal CM(M) No. 9 of 1995 filed in the High Court of Delhi has been transferred to this Board in terms of Section 100 of the Trade Marks Act,
1999 and has been numbered as TA/103/2003/TM/DEL.
2. Respondent No. 1, M/s. F.W. Woolworth Company, USA filed an application being application No. 381989B for registration of the trade mark
WOLWORTH' in respect of clothing, including boots, shoes and slippers in class 25. The mark was advertised in the Trade Marks Journal No. 962
dated 1.7.89 at page 425.
3. Appellant, M/s. Hanuman Mal Choradia filed the notice of opposition to oppose the registration on various grounds. Appellant contended that the
proposed mark is a combination of two well known dictionary words, namely, 'WOOL"" and 'WORTH"". Thus, the word is purely descriptive and
deceptive in terms of Section 2(l)(v) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellant further
contended that the mark does not qualify for registration under Sections 9, 11 and 18(1) of the Act.
4. Respondent/Applicant filed his counter statement on 09.11.90 countering the material averments of the appellant/opponent. It contended that it is
the registered proprietors of the trade mark 'WOOLWORTH' which has been registered in several countries throughout the world. It is the adopter
and user of the mark and thus the same is registrable under Sections 9, 11 and 18(1) of the Act despite the opposition of the appellant/opponent.
Respondent No. 1 filed its evidence by way of an affidavit dated 16.9.93.
5. Learned Deputy Registrar heard both the counsel on 13.5.94; Learned Deputy Registrar found the mark 'WOOLWORTH' not to be laudatory and
descriptive. He found that the same is only the natural or necessary description of any kind of clothing, boots and slippers and hence the same as a
whole is distinctive and capable of distinguishing the applicant's goods. Putting reliance upon the affidavit of Ms. Sheilagh M, Clarke he concluded that
since the mark has been registered in a number of countries and thus it has attained unique goodwill and reputation throughout the world, the same
cannot be prevented from registration. He concluded that the mark is not objectionable for registration under Sections 9, 11 and 18(1) of the Act and
thus there is no scope to exercise any discretion under Section 18(4) of the Act in disallowing registration of the mark. In conclusion, he ordered for
acceptance of the mark for registration.
6. Appeal filed by M/s. Hanuman Mal Choradia as CM(M) No. 9/95 since transferred to this Board was taken up for consideration on 16.7.2004 at
New Delhi. Learned counsel Shri Hemant Singh and Ms. Anuradha Salhotra appeared for the appellant and respondent respectively.
7. Learned counsel for the appellant argued that the proposed mark does not qualify for registration in Part B of the Register under Section 9(2) of the
Act since it is proposed to be used and thus it has not acquired any distinctiveness. He assailed the conclusions of the Deputy Registrar of Trade
Marks on the ground that, having recognised that the proposed mark is a combination of two words which according to the learned counsel are
laudatory words having distinct meanings, the Deputy Registrar should have refused registration there of, the mark being a descriptive term. He
further assailed the proposed mark under Section 11 of the Act as being deceptive. His argument was that the products manufactured or goods traded
in by the dealer should be only wool or its products. Any trading in any goods other than wool will be misleading and deceptive. He further argued that
the affidavit of the respondent on the score that they have achieved large sale throughout the world is of no use since distinctiveness to be acquired
for entitling the registration of the mark should be one attained in relation to the sales in India. In support of his claim he referred to Furniture land Ltd.
v. Harris and Ors., (1989) FSR 536, County Sound Pic. v. Ocean Sound Limited, 1991 FSR 367E, .G. Hughes Ltd. v. Vick Chemical Co., AIR 1959
Cal 654, Nestle's Products (India) Ltd. v. P. Thankaraja, AIR 1978 Mad 336, London Rubber Company V. Durex Rubber Products, AIR 1963 SC
1882.
8. Learned counsel for respondent assailed the argument that 'WOOLWORTH' is a descriptive and laudatory word being a combination of two
distinct words, that is, 'WOOL' and 'WORTH'. She argued that 'WOOLWORTH1 is the surname of a person who founded the chain of stores in
USA and now having spread throughout the world. She argued that Mr. Woolworth started his business about one hundred years back and now it is
having its branch stores in more than 61 countries. Since the registration is in Part B of the register, the capability of distinguish the goods for that part
is very well there. She referred to the conduct of the opponent in the matter also before the Registrar as having sought for innumerable adjournments.
She argued that respondent No. 1 is not only a retailer but a producer having its own production units. She drew our attention to para 6 of the affidavit
of Ms. Sheilagh M. Clarke wherein it has been stated:-
The trade mark WOOLWORTH was adopted as a trade mark and trading style by my company's founder and predecessor Frank Winfield
Woolworth in February, 1879 when he opened the first WOOLWORTH store in Utica, New York. In 1886, there were seven successful
WOOLWORTH stores in seven Eastern U.S. cities. By 1889 there were 12 stores with sales of $ 246,782. In 1890, there were 59 stores and annual
sales totalled $ 5 million and by 1905 there were 120 stores. In the year 1960, the company's sales topped $ 1 billion. By 1979, when my company
celebrated its centennial, there were more than 5,000 stores worldwide with sales totalling 6.1 U.S. dollars annually with nearly 200,000 employees.
The learned counsel further argued that it is wrong to assail the proposed mark under Section 9(l)(d) of the Act since registration sought is for Part B
of the Register. She referred to judgment of the Delhi High Court in Mohd. Rafiq v. Modi Sugar Mills, AIR 1972 Delhi 46.
9. We fail to understand the argument that the impugned mark is laudatory on the plea that it is a combination of two distinct words, that is 'WOOL'
and 'WORTH'. It is not uncommon in any society including various segments of people in the Indian sub-continent of whatever religious persuasion
they may be to have the names or the names of their clans which names dissected further can be argued to be laudatory in expression. But over ages
those expressions are an important part of our socio-cultural heritage. So is the position in the Americas where big chunk owes its lineage to the
continental tribes and communities having expressions which on hair splitting can be construed in fragments to be carrying some dictionary meaning or
being laudatory in character.
10. 'WOOLWORTH' is the name of a family clan. Mr. Frank Winfield Wool-worth, a member of that clan, started his business way back in 1879 by
borrowing $ 300 and starting with that capital he opened his first 'Five Cent Store' in Utica. New York (Skyline Queen and the Merchant Prince, The
Incredible Woolworth Story by John P. Nichols, first pocket book edition July, 1974. Similarly, there are numerous other names in the European
society and consequent thereupon in the American society where the family names as such on dissection, the parts thereof can lead to some
inescapable dictionary meaning. Learned Deputy Registrar has erred in concluding that the word 'WOOLWORTH' is not to be found in any
dictionary. The word 'WOOLWORTH' finds its place in Webster's New World Dictionary of the American Language, Second College edition, World
Publishing, New York, page 1637. The meaning ascribed to the word is 'Frank Win-field 1852-1919; U.S. Merchant'. He is the gentleman who started
the chain of Woolworth Stores. It appears that the word per se if read in a special or a particular manner could have probably qualified for registration
under Section 9(l)(a) of the Act. However, respondent No. 1 chose registration under Part B. Of course, it is required to fortify its case with sufficient
evidence of distinctiveness for qualifying for registration even in Part B of the Register, which appears to be not lacking here in view of the affidavit
of Ms. Sheilagh M. Clarke and the published material including the pocket edition book titled Skyline Queen and that Merchant Prince. The Incredible
Woolworth Story by John P. Nichols placed as evidence on the file. The transborder reputation enjoyed by the mark 'WOOLWORTH' is not
something to be not taken account of. The standing of the firm for more than a century and its chain of stores throughout the world are no mean
factor in validating the distinctiveness to qualify its passage under Section 11 of the Act.
11. Furniture land is about the words 'Furniture Land' per se the word 'Furniture' was held to be descriptive. Country Sound is about the use of the
words 'Gold' and 'Golden' in relation to popular music hits which had acquired reputation as such in 1950s, 60s and 70s. The case of M/s. E.G. Huges
Limited is about the word 'Vapo rub', which has construed to have been derived from 'Vapour and Rub'. It was held that though novelty was sought to
be given by dropping the letters 'U' and 'R', but still the word did not attain the status of an invented word. Again, for similar reasons, the word 'Instea'
(Nestle case) was not held to be an invented word for the reason that the word so formed clearly made out that it is a condensation of the expression
'Instant Tea'. We fell that these are inappropriate analogies in the instant case. The learned counsel cited para 8 of London Rubber case judgment to
brighten his arguments that the deception may result with the registration of word 'WOOLWORTH'. Surely, when the fear of deception and confusion
is being argued, we have to bring in immediately the worldwide reputation of the word to its rescue to repel the fears. One can think of only its linkage
to the chains of the worldwide stores started by F.W. Woolworth.
12. In view of the above and the worldwide reputation of the mark, it legitimately qualifies for its proprietary rights under Section 18 of the Act. In
view of the above, we conclude that the appeal fails. Accordingly it is dismissed with no order as to costs.
