S. Usha, J
1 . Application under Section 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for the rectification of the trade mark
registered under Nos. 630661B, 1078117 and 1078116 in class 32. The applicant is a company registered under the Companies Act, 1956. The
applicant company is engaged in the business of bottled water under the trade mark 'Bisleri'. The trade mark 'Bisleri' is a well-known mark, famous
and highly reputed in respect of bottled water. The applicant's goods are being marketed in different sizes and shapes of bottles and its operation runs
throughout the sub-continent of India.
2 . The applicant is the pioneer in the business of bottled water. The applicant is bottling and selling Bisleri Minerals (with added mineral) in round
bottles, Bisleri Mountain water (water drawn from different mountains) in round bottles and Bisleri from the Himalayas (water drawn from
Himalayas) in hexagon bottles. The water in its purest form is received from rain or melting snow. The water generated through melting snow or rain
while flowing through the mountains picks up the natural mineral from the ground /soil. The natural mineral water is not required or allowed to be
treated and is boiled at source i.e. from mountain or foot-hill of the mountains. No treatment is allowed and no minerals are allowed to be added. The
water which is sourced directly from the mountains by the applicant is bottled and marketed under its trade mark 'Bisleri' with a generic description
'Mountain Water'.
3 . It is an honest practice of commerce in the trade of bottled water to furnish the generic descriptive trade descriptions as to the origin of water
sourced directly from the mountains containing natural minerals. Such products are sold in market as mountain water or natural mineral water.
Similarly, the water which is sourced from the ground resources or through sources which require treatment and minerals are added thereto. Such
water is known in the trade as packaged drinking water, mineral water. Bisleri with added minerals is such water.
4 . It is also a common practice in the relevant trade of bottled water to furnish generic and descriptive trade description as to the character or quality
of such water containing added minerals. The water that is treated and minerals are added as described by the applicant and also by other
manufacturers in the trade as such. Himalayas are internationally well-known mountains in the world having an established geographical significance
and reputation. Himalayas is not only known for its height but is also known as a source for generating water in the purest form and for generating and
adding natural minerals in the water running through its vast ranges of springs / rivers etc. The natural mineral water which originates from the
Himalayas has its own qualities, characteristics and geographical specifications. The water that is sourced from the Himalayas is pure mineral water
without there being any mineral added to it or any treatment thereto.
5 . It is an honest practice of commerce in the relevant trade of bottled water to furnish generic and descriptive trade description as to the origin of
water sourced directly from the Himalayas contain natural minerals on account of the Himalayas unique characteristic, soil, climate condition,
resources and quality as to natural minerals. Such products are sold in the market as ""Himalayan Water or Himalayas Natural Mineral Water or From
the Himalayas"".
6 . The applicant had earlier been boiling and selling 'Bisleri' water for decades and Bisleri Mountain Water for two years. The applicant introduced
pure natural water directly sourced from the Himalayas under its trade mark 'Bisleri' with generic character and description of quality of the goods
and its geographical origin ""From the Himalayas"" in the month of December, 2007. The label of the applicant's goods contained bonafide description of
the goods as well as its geographical origin in conjunction with its trade mark 'Bisleri'. The applicant is entitled to use the expression ""Himalayan Water
or From the Himalayas"" to indicate the kind, quality and geographical origin of the goods. They are also entitled to use the expression ""From the
Himalayas"" in respect of pure natural water to indicate the characteristics of the goods being the pure natural mineral water directly sourced from the
Himalayas.
7. It is not only the applicant but also the entire trade which has a legal right to use such generic and descriptive expressions which indicate the kind or
quality or characteristics of the goods. In such cases no individual person or company can claim exclusive right to use of such expressions or names
which serve the purpose to designate the character, kind or origin of the goods.
8 . The applicant company is a market leader with majority of the market share of bottled water industry currently estimated to the tune of ' 1200
crores. The applicant's products are promoted by vast print and electronic media with the emphasis on its highly reputed trade mark 'Bisleri' with the
generic description of the water. The applicants have more than 50 bottling plants and around 1,80,000 outlets in the country for the sale of its goods.
9. The applicant was shocked to receive the suit summons and notices for perpetual injunction instituted by the Respondent No. 2 before the Hon'ble
High Court of Delhi in the month of December, 2008 wherein an order or perpetual injunction was sought by the Respondent No. 2 restraining the use
of the generic descriptive characteristics expression ""From the Himalayas"" and / or Himalayan Water in respect of water sourced and bottled by the
applicant from the Himalayas. On perusal of the averments made in the plaint in CS (OS) No. 1172/08, the applicant became aware of the registered
trade mark No. 630661, 1078117 and 1078116 in class 32 for a label mark consisting of the generic, descriptive characteristic expression ""Himalayan
Mineral Water"". The applicant also became aware of the fact that the registration was made in the name of the Respondent No. 1, namely Dr. Dadi
Balsara and not Respondent No. 2. The applicant, therefore, impleaded both the Respondent No. 1 and Respondent No. 2.
10. The applicant is in the same trade of bottling and marketing water sourced from different sources in which the Respondent No. 2 also claims to be
engaged and holds registration to hamper the legitimate and bonafide trade of the applicants. The registration is a hindrance in the applicant's trade.
The applicant is thus an aggrieved person by the continuance of the entry relating to the said trade marks remaining on the Register and is thus left
with no alternative but to approach this Appellate Board for the rectification of the Register and for removal of the impugned trade mark from the
Register all together and / or impose a condition that the registration will not confer any exclusive use of the word 'Himalayan' or 'Himalayan Mineral
Water' as far as registration No. 630661 is concerned and for removal of the mark all together as regards the other two registration Nos. 1078117 and
1078116.
1 1 . The application No. 630661 in class 32 was filed on 10.06.1994 by the Respondent No. 1, namely Dr. Dadi Balsara claiming user from
13.04.1991. The application Nos. 1078117 in class 32 and 1078116 in class 32 were filed by the Respondent No. 1, namely Mountain Fresh Mineral
Water Limited claiming user since 13.04.1994. The application No. 630661 pertains to the registration of composite label mark consisting of the
pictorial representation of the Himalayan mountains / Himalayas and the generic indication of geographical and characteristic expression with the
words Himalayan Mineral Water. The word Dadi forming part of the label mark with generic expression was the only mark capable of being
described as an essential feature thereof. The application Nos. 1078116 and 1078117 pertains to the registration of the generic indication of
geographical and characteristics expression Himalayan in respect of mineral water.
12. As regards application No. 630661 the applicant, namely, the Respondent No. 1 had no bonafide intention to use the trade mark in relation to
mineral water, aerated water or any other non-alcoholic drinks, for which registration was sought. The generic description Himalayan Mineral Water
appearing in the label mark was not capable of being used as a trade mark in respect of any of the goods i.e. mineral water or aerated water or any
other non-alcoholic drinks except in a case where the generic expression was intended to be substituted with other generic expression for aerated
water or non-alcoholic drinks with Dadi forming an essential part of the label mark. There was no bonafide use of the impugned trade mark label in
relation to any of the goods by the Respondent up to the date three months before the date of filing of the present rectification application. The
impugned applications were examined and the Trade Marks Registry had objected to the registrability of the trade marks under Sections 9,11, and 12
of the Trade and Merchandise Marks Act, 1958. The Registrar of Trade Marks while examining the registrability of the impugned trade mark
considered the provisions of Section 9 as a statutory bar to the registrability of the application. The Respondent made false and misleading statements
in relation to the material facts while responding to the objections. On account of such misrepresentation the mark was advertised before acceptance
in view of the discretionary power vested with the Registrar. The discretion of the Registrar was invoked by the applicant i.e. the Respondent herein
and the Registrar exercised his discretionary powers on the basis of the false claim of user of 13.04.1991 and 13. 04.1994 respectively as was made in
the applications. It is just apparent that the foundation of the application for registration was made with false claim of user coupled with malafide
intentions, dishonesty and bad faith. The order of advertisement of the application before acceptance was also obtained by false representation. The
registration has been obtained by playing fraud on the Registrar.
13. On 10.06.1994, Dr. Dadi Balsara, the Respondent No. 1 in ORA/180/08/TM/DEL moved another application for registration of an identical mark
under No. 630647 in which the device of Himalaya with the words Himalaya Springs and the word Dadi was depicted. The user again was claimed
from 13.04.1991. On examination of that application No. 630647 the Registrar also raised objection as to registrability of the mark on the ground of
being violative of provisions of Sections 9,11 and 12 of the Trade and Merchandise Marks Act, 1958. Despite the misrepresentations made by the
Respondent in response to the examination report, the Registrar insisted upon in making an entry of disclaimer to the exclusive use of the device and
word Himalaya Springs. It is, therefore, clear that the Registrar while directing the advertisement of the application before acceptance considered the
word Dadi as the only feature of the trade mark value and not the word Himalayan or the device thereof for mineral water. The Respondent having
agreed to enter the disclaimer to the exclusive use of the device and the word Himalaya Springs and device of Himalaya, the application was ordered
to be advertised before acceptance.
14. It is also pertinent to mention that the disclaimer agreed to was ordered to be advertised before acceptance in Part A of the Register for
application No. 630647 and application No. 630661 which was ordered to be advertised before acceptance in Part B of the Register omitting the
disclaimer. The registration of the label mark under No. 630661 was made on the basis of the application filed on 10.06.1994 without disclaimer to the
exclusive use of the words Himalaya or Himalayan Water or the device of Himalayas despite the Registrar insisting upon such disclaimer in
application No. 630647 filed on the very same date.
15. It is also pertinent to mention that the application Nos. 630647 and 630661 filed on the very same date were ordered to be advertised before
acceptance under Section 20(1) proviso of the Trade and Merchandise Marks Act, 1058 and the Rules framed there under. The Registrar of Trade
Marks is vested with discretion to cause an application to be advertised before acceptance if the same relates to a trade mark to which Sub-section
(2) of Section 9 applied or in any other case where it appeared to him that it was expedient by of any exceptional circumstances, the Registrar of
Trade marks was not satisfied with the word Himalayan being distinctive and therefore, considering the provisions of Section 9(2) of the said Act
being a bar to the registrability caused the applications to be advertised before acceptance. On perusal of the two application Nos. 630661 and 630647
there was no material difference between the two either on the date of filing the application or on the date when it was ordered to be advertised
before acceptance. Both the applications were advertised in the Trade Marks Journal (Mega 1) dated 25.08.03. The suppression of application No.
630647 and the disclaimer made therein on the part of the Respondent is an abuse of process of law. In view of the fact that a disclaimer was
imposed, there was no reason to omit entering such conditions or disclaimer in respect of the registration number 630661 B. Accordingly there is a
serious omission or absence of an entry in the Register to the effect that the registration will not confer any exclusive right to the use of the words
Himalaya or Himalayan with a view to protect the public interest as well as the bonafide interest of the traders under the provisions of Section 31(1)
of the Act.
16. The applicant respectfully submits that there was no material difference in the claims made by the applicant for registration in application Nos.
630661 and 630647. The different yardsticks adopted by the Registrar in insisting the disclaimer in application No. 630647 and for proceeding in Part
A of the Register and in advertising application No. 630661 in Part B without entering the disclaimer clearly demonstrate the malafide and abuse of
the discretion vested in the Registrar under the provisions of the Act. The discretion was not judiciously exercised by the Registrar and as such the
Registrar had acted illegally to grant registration to such a descriptive, generic and geographical name in the form of a mark. The Registrar also failed
to discharge its statutory obligation, being the custodian of the Register and acted in an arbitrary and illegal manner. The entry of the trade mark was
thus wrongly made and wrongly remaining on the Register.
17. The malafides of the Registrar acting in collusion with the Respondent are also apparent from the fact that when application No. 630661 was
ordered to be advertised before acceptance in Part B without any disclaimer, advertisement of application No. 630647 was advertised before
acceptance with the disclaimer in Part A of the Register. The double standards adopted by the Registrar acting under the same provisions of the Act
and Rules itself demonstrate the collusion and malafide in making the registration of the application without sufficient cause illegally and wrongfully
made.
18. The three applications were ordered to be advertised before acceptance. This act of the Registrar also demonstrate that the provisions of Section
9(2) were considered to be absolute bar to the registrability of the applications on account of the mark lacking distinctiveness and / or being
descriptive, generic and indicative of the geographic origin. The Registrar also failed to discharge his statutory obligation under Section 23 of the Act
at the time of making the entry in the Register. The Registrar did not pass any order giving reasons for waiving the objections under Section 9(2) of
the Act. In the absence of any reason given for such acceptance, the entry relating to the trade marks was also wrongly made and continues to
remain on the Register without sufficient cause.
1 9 . The registered proprietor Dr. Dadi Balsara, the Respondent herein obtained registration of the impugned trade mark without any bonafide
intention to use it and that it should be in relation to the goods for which the registration was desired and obtained. The Respondent did not make any
bonafide use of the word Himalayan as a trade mark in relation to mineral water at any point of time before filing of the application, after filing of the
application, before grant of registration or after the grant of registration. In view of the above, the trade mark registered under Nos. 630661B, 1078117
and 1078116 in class 32 is thus liable to be rectified and removed under Section 47(1) (a) and Section 47(1) (b) of the Trade Marks Act, 1999.
20. The applicant submits that the word Himalayan and Himalayas are purely generic and descriptive words expressions having direct reference to the
character and quality of goods i.e. natural water and indicative of geographical origin as such are not capable of performing the role of a trade mark
much less being registered as a trade mark.
21. The word Himalayas is also a dictionary word. It is apparent from the above, description of Himalayan is an adjective to the word Himalaya. The
word ""Hima"" means snow and ""Alaya"" means abode. The meaning of the word Himalaya is thus ""snow abode"". The source of purest form of water,
as aforesaid, is either rain or the water of melting snow. The applicant as well as other members of the trade are entitled to use the expressions
Himalayan, Himalaya or Himalayas or any variant thereof to indicate the source of origin of the goods and such use is in accordance with honest
practice in industrial and commercial matters and is bonafide and honest. The registration of the impugned mark is not only violative of provisions of
law but an obstruction, hindrance in trade of bottled water directly sourced from the Himalayas.
2 2 . The claim of the Respondent for infringement of the mark consisting of the generic name or geographical indications as made in the suit based on
the basis of registration are also not maintainable. The registration of the impugned trade mark is also wrongly remaining on the Register on account of
subsequent legislation called the Geographical Indication of Goods (Registration and Protection) Act, 1999 which came into force on 15.09.2003. The
registration of the impugned mark was made on the date prior to the enactment and coming into force of the Geographical Indication of Goods
(Registration and Protection) Act, 1999. Under the provisions of the said Act only an association of persons or producers or the organizations or
authority established by or under any law for the time being in force representing the interest of the producers is entitled to obtain registration of the
geographical indications by following the due procedures. Therefore, no individual can or is entitled to claim registration of a geographical indication or
name.
23. The applicant, therefore, submitted that the other ground of rectification is that the Respondent is not the prior adopter or user of the word
Himalayan or proprietor thereof under the provisions of law. The registration under the provisions of the Act do not confer any new right that what
exists under any law. The Respondent's false claim of proprietorship under Section 18 of the Act is guilty of pirating the word Himalaya which was
being used in the course of trade since 1947 by another person Mr. Nasiruddin. The Respondent dishonestly and malafidely adopted the word
Himalayan having full knowledge of the earlier adoption and use by Mr. Nasiruddin in the course of trade since 1947 in respect of syrups for making
beverages and cool drinks tantamount to a fraud on the Registrar. The mark Himalaya is registered under No. 131890 in class 32 as of 11.12.1947 in
the name of Mr. Nasiruddin and was already registered on the date of alleged adoption, first use or filing of application for grant of registration in
favour of the Respondent. The Respondent is not the prior adopter and user of the trade mark and therefore the adoption and use are not only devoid
of any merit but are misconceived in the eyes of law.
24. The registration obtained by Respondent is by playing fraud and does not confer any exclusive right on the Respondent. The entry pertaining to
registered trade mark is thus liable to be rectified on the following grounds:
a) The registration of the impugned mark was in contravention of the provisions of Sections 18(1), 18(4) and Section 20 of the Trade and Merchandise
Marks Act, 1958.
b) The registration could not have been made in the name of the Respondent without passing specific order in writing for the acceptance of the
application before granting registration or making an entry in the Register.
c) The application could not have been advertised under the proviso of Section 20(1) of the Act without entering a specific disclaimer, condition which
was made in respect of application No. 630647.
d) There was no change of circumstances from the date of filing of application and passing an order for advertisement of the application before
acceptance to the registration of the mark justifying the waiver by a statutory bar created under Sections 9,11, 12 and 18 of the Act.
e) The registration of the impugned mark was made by the Registrar by committing procedural illegalities.
f) The entry relating to trade mark has been made in the name of the Respondent without sufficient cause on account of illegalities and statutory
violations and thus the same has wrongly been made in the Register and is wrongly remaining on the Register. g) The Registrar acted illegally in
adopting double standards in respect of application Nos. 630661 and 630647 filed on the same date with identical particulars.
h) The Registrar violated the provisions of Section 16 of the Trade and Merchandise Marks Act, 1958.
i) The registration of the impugned mark was obtained by playing fraud on the Registrar of Trade Marks.
j) The Respondent was specifically informed about the registration of the trade mark No. 131890 in class 20 in the examination report issued by the
Registrar and the Respondent proceeded to register the impugned trade mark as its own peril and risk.
k) The application for registration of the impugned trade mark was not made in good faith.
l) It is in honest practice of commerce in the relevant trade of bottled water to furnish generic and descriptive trade description as to the origin or
source of the water.
m) The word Himalayan or Himalayas are purely descriptive, generic and indicative of the geographical origin of the goods for which the registration
has wrongly been obtained by the Respondent.
n) The registration was made and continues to remain in contravention of the provisions of Section 11 of the Act.
o) The registration of the impugned trade mark was obtained by concealing material facts and by making misrepresentation before the Registrar of
Trade Marks.
25. It is, therefore, prayed that the registration of the impugned trade mark under No. 1078117 in class 32 and under No. 1078116 in class 32 be
removed / rectified/expunged from the Register of trade marks altogether.
26. It is also prayed that application registered under No. 630661 be removed or in the alternate a condition / limitation to the exclusive use of the word
Himalayan and the device of Himalaya be entered in the Register - registration of the trade mark No. 630611B shall not confer exclusive right to the
use of the expression Himalayan or device of Himalayas.
27. The Respondents filed their counter statement denying each and every averment made by the applicant in the application. The Respondent stated
that the trade mark 'HIMALAYAN' was adopted by Dr. Dadi Balsara, the promoter of Mount Everest Mineral Water Limited which was
incorporated on 20.12.1991 and converted into a public limited company under its present name on 13.04.1994. Dr. Dadi Balsara by a formal
agreement dated 9.06. 2001 assigned all rights to the company. The Respondent adopted the trade mark 'HIMALAYAN' in the year 1994 and is one
of the leading company packaging and marketing natural mineral water with high standard, quality and reputation under the Respondent's distinctive
trade mark 'HIMALAYAN'. The Respondent's product is recognised as internationally accepted quality natural mineral water from India and was
being exported to various countries in the past and is accredited by US FDA, European Union and the Health Ministries of Japan and France. The
Respondent's domestic clientele includes chain of hotels including The Taj, The Oberoi etc., and airlines including Jet Airways, and fine dining
restaurants like Zodiac Grill, China Gate, Golden Dragon etc. The Respondent is located at the Sirmour district of Himalachal Pradesh. The
Respondent has one of the most modern, state-of-the art natural mineral water plants in Asia in technical collaboration with Institut De Fresenius,
Germany, leader in the treatment of environmental pollution control and production technology of natural mineral water.
28. The trade mark 'HIMALAYAN' as was adopted by the Respondent in the year 1994 and is in regular and continuous use for the past more than
14 years. It has acquired wide status and reputation as a distinctive trade mark associated with the Respondent's mineral water and no one else.
Respondent's trade mark 'HIMLAYAN' after being advertised in the Trade Marks Journal No. Mega 4 dated 25.10.2003 was registered under No.
1078116 on 07.06.2005 and under No. 1078117 on 12.05.05.
29. The Respondent's claim of right to exclusive use of the word 'HIMALAYAN' in relation to mineral water is by virtue of long and established use
as well as by virtue of registration in its favour. The Respondent holds 50% share in the natural mineral water segment and has one of the largest
natural mineral water plants in Asia. The Respondent's products under the said brand is bottled at source and no doubt with vital natural minerals, the
water is untouched and unprocessed with a unique taste.
3 0 . In the year 2007, the Tata Group acquired 31.73% of the shares of the Respondent and took over the management of the Respondent's operation
by virtue of prior adoption and use of the trade mark for a continuous period of over 14 years. The same has acquired vast reputation and the highest
status that it became a well-known trade mark both in India as well as abroad.
31. The present application for rectification under Sections 47, 57 and 125 of the Act for removal of the trade mark filed is an abuse of process of law
and devoid of any rational justifying the claims. The following are the points of denial to the contentions and allegations made by the applicants in their
application.
a) As regards reference with regard to the procedural defect prior to the registration, the registration is in no way contrary to the provisions of
Sections 9, 11, 18(1), 18(4), 20 and 23 of the Act.
b) It is denied that the registration is liable to be revoked either as being wrongly granted or being wrongly remaining on the Register or without any
reasonable cause.
c) As regards the association, the Registrar may require trade marks to be entered on the Register as associated trade mark to avoid identical marks
registered for identical goods so split as to create different proprietorship and further, in case of assignment to be dealt as a package deal. No such
situation has arisen as to raise an objection under Section 16 of the Act.
d) As regards the disclaimer, no disclaimer was required as the subject matter was neither common nor commonly being used in the trade or
otherwise being non-distinctive. In the present case the word 'HIMALAYAN' was not required to be disclaimed as it was capable of distinguishing
the goods.
e) The applicant has totally misrepresented the provisions of Geographical Indication of Goods (Registration and Protection) Act, 1999. The provisions
of Section 26 of Geographical Indication of Goods (Registration and Protection) Act, 1999 is to protect the trade mark which contains or consists of a
geographical indication which has been applied for and registered in good faith before the commencement of the proposed legislation or before filing of
an application for registration of a geographical indication. In the present case, Section 26 of the Geographical Indications Act protects the trade mark
'HIMALAYAN' as it was registered prior to the said Act and rights to the same acquired before the commencement of the said Act.
f) The allegations with regard to the mark neither being distinctive nor capable of being distinguished-Apart from the statutory rights arising from
registration of the trade mark which in itself adequately protects the Respondent's proprietary status. Respondent has indeed used the trade mark
extensively over the past atleast 14 years and such use renders the mark's capacity of distinguishing. The word 'HIMALAYAN' is a generic or
descriptive expression having any direct reference to the character and quality of natural water. The word 'generic' by its very meaning connotes
something that is the genus, for example 'water for water', milk for milk', juice for juice' etc., A descriptive expression is literally something that
describes the article for which it is used for example, ""natural"", ""spring"" etc. The word 'HIMALAYAN' does not fall under any of such category.
g) The petition for cancellation of the registered trade mark is filed in bad faith suppressing relevant and material facts-The present applicant's counsel
Mr. Amarjit Singh and Mr. Gurvinder Singh were at one time acting on behalf of the Respondent under a Power of Attorney in the proceedings
before the Registrar of Trade Marks. It is highly objectionable that they have raised objections to the registrations obtained through them as attorneys
of the Respondent. The Respondent was taken back to find an advertisement of the applicant's product in the Brand Equity supplement of The
Economic Times. The advertisement depicted the applicant's product with a new packaging containing the word 'HIMALAYAS' which makes the
applicant's product deceptively similar to the Respondent's product. The word 'HIMALAYAS' appears prominently in a large font on the applicant's
product, the written material appearing on the advertisement also contains the Respondent's trade mark HIMALAYAN as well as deceptively similar
usage of the words such as NEW HIMALAYAN, HIMALAYAS, BISLERI HIMIALAYAN WATER, BISLERI HIMILAYAN etc. these acts of
the applicant cannot be termed as bonafide. The applicant intends to adopt the Respondent's trade mark and never had any intention to use the generic
expression ""as from the range of Himalayas"" The use of the word HIMALAYAN/HIMALAYA in bold lettering not forming part of the sentence
itself shows the malafide intentions. The applicant has filed the present application as a counter-blast to the suit and to side track the main issue which
is before the Hon'ble High Court at New Delhi. The Respondent stated that the applicant had prior knowledge about the status and reputation of the
Respondent's mark and intends to use the same by crossing the fence and usurping the Respondent's legal and vested rights for its own benefit. The
malafides of the applicant is evident from yet another instance when the applicant applied for a domain name registration of the website
www.bislerihimalayan.com containing the Respondent's trade mark HIMALAYAN and other deceptively similar use of the Respondent's trade mark
such as 'BISLERI HIMALAYAN WATER' and ' New HIMALAYAN Water from Bisleri'.
h) The Respondent maintains that the malafide intention on the part of the applicant is apparent from the fact that at one stage the applicant claimed
BISLERI to be their trade mark for mineral water while HIMALAYA/HIMALAYAN being claimed as descriptive which is not true to be so
because if a party claims the use of an expression as generic, then each of the word of the generic expression was to be in juxta position and not that
one of the word that is a registered trade mark of another to be displayed as shown in different bold lettering. The applicant has approached this
Appellate Board by not stating the complete facts that there is an action concerning the trade mark HIMALAYA / HIMALAYAN pending before
the Hon'ble High Court of Delhi and Form-1 specifically states that the applicant has to mention if there is any action pending in any court or before
the Registrar of Trade Marks.
i) The applicant is not a person aggrieved - The applicant had prior knowledge about the status and reputation of the Respondent's product and now
intends to use the same or similar mark for its own benefit. A dishonest person making desperate efforts to infringe someone else's trade mark ought
not to be treated as a person aggrieved.
j) False allegation against the Respondent - the Respondent obtained registration by playing fraud on the Registrar of Trade Marks as well as on the
applicant is denied. The applicant was not even manufacturing or marketing natural mineral water at the time of filing application by Respondent but
even after Respondent had received the registration. As far as the cited registration under No. 131890 is concerned, it was for the word 'Himalaya' in
respect of syrups for making beverages and cool drinks and not for mineral water. The said registration does not have any bearing on the
Respondent's rights. The applicant is giving a self-serving and complete incorrect interpretation of the essential features of the mark. The word DADI
was name of the founder appearing on the side panel. There is, therefore, no substance in the contentions of the applicant. The word HIMALAYA
forms an essential feature of the mark and is protected under registration.
k) Reply to the grounds: The Respondent denied the averments made in each and every ground and specifically denied some of the grounds. The
applicant never had any intention to use words like ""from the ranges of Himalayas"" to indicate the source of origin. The use of the word
HIMALAYAN / HIMALAYA in bold lettering (not forming a part of expression) itself shows the malafide intentions. The use of the expression
NEW indicates as if the old product was now in new packaging amounting to dilution of Respondent's trade mark HIMALAYAN. As regards the
allegation that the application for registration of the trade mark under No. 630661 in class 32 was filed on 10.6.94 by the founder Dr. Dadi Balsara
whereby it was stated that the subject matter of registration was not used from 13.4.1991. There appears to be a typing mistake in the advertisement
of the mark of which the applicants intends to make an issue. The Respondent submits that the copy of the representation clearly show the correct
date of user and the name. Initially Dr. Dadi Balsara intended to register the trade mark to be used by the Respondent company founded by him.
Further, by formal agreement dated 9.6.01 all right of the trade mark stood assigned to the founder of the Respondent company. The sales figures and
the expenses incurred by the Respondent since the year 1997 in respect of its trade mark runs to several lakhs of rupees which only goes to prove that
the reputation and goodwill earned by the Respondent.
l) In view of the aforementioned facts of the case, the Respondent most humbly prays that the application for rectification be dismissed.
3 2 . The applicants filed their reply to the counter-statement. The preliminary objection of the applicant was that the Respondent has not made due
compliance with the requirements of Rule 10 (1) of the Intellectual Property Appellate Board (Procedure) Rules, 2003. No counter statement in the
prescribed form has been filed. In the absence of appropriate pleadings in the form of counter-statement in the prescribed manner, the affidavit of Mr.
A P K Chettiar cannot be entertained in the eyes of law. The averments made in the affidavit are based on its personal knowledge. Respondent has
failed, neglected and / or omitted to file any primary evidence through the deposition of the person having direct knowledge of the facts and
circumstances of the case. The hearsay evidence is equally not admissible in law.
33. The Respondent who is the proprietor failed, neglected and / or omitted to file counter-statement in accordance with the provisions of Rules. Mr.
A P K Chettiar has no power or authority to represent Dr. Dadi Balsara or to make any deposition on his own. In the absence of any counter-
statement and evidence, the averments made in the petition for rectification are deemed to have been admitted by the Respondent and the applicant is
entitled to the orders in terms of the prayers made in the application for rectification.
3 4 . None of the ground for rectification relied upon by the applicant has been specifically dealt with or denied by the deponent in the counter-
statement. The Respondent was in existence as an individual juristic personally independent of Respondent No. 2 Mr. A P K Chettiar has no locus
standi to represent the Respondent or to make any statement on behalf of another individual who is the main Respondent in the proceedings. The
registered proprietor on the date of institution of rectification proceedings was Respondent No. 1 only (Dr. Dadi Balsara), Respondent No. 2 (Mount
Everest Mineral Water Limited) has not even claimed to have been recorded as subsequent proprietor in accordance with the provisions of Section 44
of the Act. Therefore, the Respondent No on .2 has no locus standi to defend the present rectification proceedings on behalf of the registered
proprietor.
35 . On 9.6.01, the date of alleged assignment the trade mark was admittedly an unregistered trade mark. The unregistered trade mark was not
assignable except along with the goodwill of the business concerned as per the provisions of Section 38 of the Act. The Respondent had admittedly
neither made any use of the trade mark nor had any bonafide intention to use the mark. As such no proprietary right in the unregistered mark was
ever vested or acquired by Respondent No. 1 for use of the mark under the common law. Mere filing of application for registration will not confer or
create any right capable of being assigned. In rest of the rejoinder to the counter-statement the applicant had elaborately stated about the registration
of the trade mark.
36. The applicant had also stated in respect of the objections raised by the Registrar of Trade Marks regarding the registrability of the trade marks,
was in contravention of the provisions of Sections 9,11 and 18 of the Act. The Respondent had with malafide intentions and by playing fraud obtained
registration on false representations.
37. The other main submission of the applicant was that the Respondent had not denied or answered the averments made in the application and
therefore, they are to be treated as has been admitted by the Respondent. Therefore, the applicant prayed that the rectification applications be allowed
and the marks be removed altogether as far as trade mark Nos. 1078116, 1078117 are concerned and as regards application No. 630661, the mark be
removed altogether or in the alternative a condition / limitation to the exclusive use of the word HIMALAYAS / HIMALAYAN shall be entered in
the Register.
38. We have heard Shri Amarjit Singh learned Counsel for the applicant assisted by Ms. Supreet Kaur and Shri Sanjay Jain, Senior Counsel for the
Respondent 1 and 2 assisted by learned M.S. Bharath, Ms. Swati Sharma, Ms. Vaishali Mittal, Ms. Ruchi Jain in the Circuit Bench Sitting at Delhi on
28.10.10 and 11.11.10 .
39. The above three matters were heard together as the issues and parties to the matters are one and the same and a common order is being passed
with the consent of both the parties.
4 0 . The learned Counsel for the applicant submitted that there are registrations granted under No. 630661 in class 32 a label mark and under Nos.
1078116 and 1078117 in class 32 word marks. The counsel drew our attention to the label mark under No. 63061 and submitted that the application
was made on 10.6.1994 claiming user since 13.04.1991 and the registration was granted on 20.11.2007. The mark was advertised before acceptance
in the Trade Marks Journal No. 1343 dated 01.05.2006 where there was a disclaimer to the word ""Mineral Water"". The other two registration
applications were filed on 04.02.2002 claiming user since 13.04.1994. The said applications were advertised before acceptance in the Trade marks
Journal Mega 4 dated 25.10.2003.
41. The counter-statement has been filed by the company and not by the registered proprietor of the trade mark Dr. Dadi Balsara. There is no locus
standi for the company to file the counter-statement. The company was incorporated on December 20, 1991. Dr. Dadi Balsara adopted but not used
was the Respondent's averment and is so answered in the counter-statement. It is also stated in the counter-statement that the mark was adopted by
Dr. Dadi Balsara in the year 1994 to use it through the company and therefore assigned. The date of user is a typing error in the first application under
No. 630661 is the averment of the Respondent in the counter statement but has no answer as to any steps taken to get that error rectified.
42. The counsel submitted that the rectification application against registration No. 630661 has been filed on the ground of non-user under Section
47(1) (a) & (b) of the Act. The Respondent has not averred in the counter-statement that Dr. Dadi Balsara used the trade mark. As per the
provisions of Section 46 of the Act, a company about to be formed is an exception under Section 47(1) of the Act. The Respondent has not taken any
action as regards the assignment and the recordal of the subsequent proprietor.
43 . The person who has filed the counter-statement has no authority to file the same. The counsel then relied on the provisions of Section 57(2) and
(3) of the Act and submitted that the impugned trade marks ought to be removed as they were remaining on the register without sufficient cause. The
impugned applications were made in the year 2002 claiming user since 1994. By a period of eight years use the mark cannot be said to have acquired
distinctiveness.
44. In the case of application No. 630661, the mark was never used by Dr. Dadi Balsara and so cannot be said to have acquired proprietorship and
therefore not qualified for registration under Section 18(1) of the Act. As per the provisions of Section 20(1) proviso the trade marks are advertised
before acceptance. In the counter-statement, the Respondent has denied the statement that the registration is in contravention of the provisions of
Sections 9,11 and 18 of the Act but not given any reason except for a mere denial. In fact there were two applications for a single mark under Nos.
630661 and 630647, when disclaimer was imposed in the application No. 630647, the applicant, i.e. the Respondent herein did not pursue that
application and so was abandoned. Section 16 of the Act is not applicable to the case on hand.
45 . The Registrar failed to include the disclaimer which is an error. He has used different yardsticks while dealing with the application No. 630661.
The aspect of disclaimer is not examined judicially. The Registrar failed to discharge the legal obligation.
46. The trade marks shall not be registrable as per the provisions of Section 9(1) (a) & (b) of the Act. The assignment mentioned in para 1 of the
counter-statement is not valid. The assignment has been signed by the same person, no consideration and no proper stamp and therefore not valid.
47. The deed of assignment has been signed in the year 2001. The trade mark was registered and certificate issued in the year 2005/2007
respectively. As per the provisions of Section 38 of the Trade and Merchandise Marks Act, 1958, an unregistered trade mark shall not be assigned.
The assignment is void as per the provisions of Section 25 of the Indian Contract Act as there is no consideration.
4 8 . The word 'Himalaya' is purely descriptive, generic and laudatory and so the marks are not registrable under Section 9 of the Act which is the
absolute ground for refusal of the registration. The counsel then pointed out that the mark contains the word 'natural mineral water' which describes
the characteristics of the goods-water, geographical origin - mineral water is born in the majestic Himalayas. The counsel also pointed out to the
various advertisement - pamphlets filed along with the counter-statement and submitted that the mark is too descriptive and therefore not registrable.
The word 'Himalaya' means - Him - Snow and Alaya - abode. The counsel then relied on the provisions of Section 35 of the Act. The counsel then
reiterated the averments made in the application for rectification - statement of case. In the counter-statement at page 16, the sales figures are given
which is not relevant as far as the application No. 630661 is concerned as there had been no use of the mark by the Respondent. The counsel then
referred to Section 26 of the Geographical Indication of Goods (Registration and Protection) Act, 1999 and stated that the trade mark with the generic
work or of geographical indication registered is in bad faith and with malafide intentions. The Respondent has not placed any proper evidence before
the Registrar at the time of registration. As regards the power of attorney issue by the Respondent in the counter-statement was not pressed and
therefore that issue was not dealt in by the applicant during the arguments.
49. The applicant submitted that the counter-statement filed by Mr. A.P.K. Chettiar has no authority or power to file and therefore the counter-
statement is not a valid statement. In the absence of valid counter-statement, the application is deemed to have been admitted and the applicant is
entitled for the prayers sought for in the application for rectification.
50. The counsel finally relied on the judgment reported in 2007 (34) PTC 731 (IPAB) Jain Doors Pvt. Ltd., v. Suresh Kumar Jain and 2007 (34) 352
(IPAB) Sarda Plywood Industries Ltd. v. Deputy Registrar of Trade Marks and Anr. and passages from the Manual on Trade Marks.
51. The learned Counsel for the Respondent in reply to the applicant's arguments submitted that the allegation that the mark was neither distinctive nor
capable of being distinguishable was not valid. The mark was used for more than 14 years and such use rendered the mark the capacity of
distinguishing. The word 'Himalayan' is not a generic or descriptive expression having any direct reference to the character and quality of natural
water. The allegation that the impugned trade mark was obtained by playing fraud was denied. The allegation that the Respondent is the pirator of the
trade mark was denied as the trade mark No. 131890 is concerned as it is for the word 'Himalaya' in respect of syrups for making beverages and cool
drinks. The counsel placed before us the computer status report of the said mark. The counsel thereafter submitted that the rectification application
was filed after the institution of the civil suit against the application and therefore was a person aggrieved. The mark not used as a whole was denied.
The defence that the mark as a whole has to go as the word Dadi is not prominent was denied.
52. The counsel produced the acceptance order and submitted that there was already a disclaimer imposed as regards the device of mountain and
mineral water. Himalayan Spring is a composite word, it will not be valid if the word Himalayan Spring is totally disclaimed. The counsel then
submitted that the assignment was in the year 2001 and there was no time limit for recordal and the Respondent had taken steps for recordal and
therefore delay cannot be due to the fault of the party. The first Respondent i.e. Dr. Dadi Balsara had major share in the company and therefore the
deed of assignment was executed by the same person. The validity of the assignment cannot be questioned here before this Forum.
53. The use by the Respondent has been proved by the sales figures mentioned in the counter-statement. The applicants have filed the rectification
application on the ground of non-user. The onus, therefore, is on the applicant to prove non-user which has not been done so by the applicant.
54. The Registrar's order that the mark is advertised before acceptance cannot be a presumption that it is not accepted for registration as per the
provisions of Section 9 of the Act. Section 20 proviso is in exceptional circumstances when there is no opposition then it is deemed to be accepted.
The counsel then relied on the provisions of Section 18 of the Act and submitted that as per Sub-Section 1 of the Act, only the proprietor of a trade
mark shall apply for registration, Sub-Section 4 - the Registrar may accept the application absolutely for registration or subject to such conditions or
limitations and Sub-Section 5 - the Registrar shall record the reasons for refusal or conditional acceptance. Therefore, the Registrar has accepted the
application for registration imposing a disclaimer condition. As per the provisions of Section 23 of the Act, the registration dates back to the date of
application. There is no procedure for acceptance. Section 46 of the Act is not applicable as the application was not made based on Section 46 of the
Act. The provisions of Section 47(1) (a) and (b) is also not applicable as the Respondents had been using the trade mark. The counsel then relied on
the Astronaut trade mark case - 1971 RPC 655 to say that the mark registered in the name of non-trading company having officers who were
Directors of another company, sales by the other company and advertisement referring to registered proprietor, use by registered proprietor
established.
55. The counter-statement signed by the General Manager of the company is valid and the allegation that the General Manager has no authority to
sign is wrong. The counsel also pointed out to clause made in the deed of assignment in this regard. The provision of Section 42 of the Act is
applicable only without goodwill. Section 45 is very clear as regards the rectification application under Section 57 of the Act. The counsel then relied
on the provisions of Section 32 of the Act and stated that even if the registration has been granted in contravention of the provisions of Section 9(1) of
the Act, it shall not be declared invalid if it had acquired a distinctive character by use.
56. The application for rectification has been filed on 14.7.2008 and the Respondents have furnished the sales promotion figures up to date and the
issue of non-user does not survive. Though the applicant has stated that the mark is used by one Mr. Nasiruddin, to the Respondent's knowledge it has
not been used except obtaining of registration. The trade mark is not generic and it has to be considered whether there is trade connection. The
applicants have to prove that the trade mark is generic.
57. The applicants have failed to state that a suit was pending between the parties in the application for rectification. The counsel relied on Section 16
read with Section 55 of the Act as regards associated marks. The counsel further submitted that as per Section 26 of the Geographical Indication of
Goods (Registration and Protection) Act, 1999, the registration allowed was valid. All the journals contain the application advertisement as advertised
before acceptance and therefore there is nothing which is prohibited under the Trade Marks law and to consider it as invalid.
58 . The counsel relied on a passage from the book on Law of Trade Marks and Passing Off by P Narayanan at para 21.45 and submitted the
relevant date of use is considered as the date when the mark was entered on the Register and not the date of application and referred to the
observation made in the Judgment - Ciba v. Ramalingam AIR 1958 Bom 56 at 61 (DB).
59. The counsel then submitted that the judgments relied on by the applicants were of no relevance to the case on hand. The counsel finally submitted
that in the Trade Mark Journal No. 1343 as regards application No. 630661 B, the device of mountain was not disclaimed even though in the order of
acceptance there was a disclaimer condition imposed. In that case corrigenda can be issued to rectify the same.
6 0 . In rejoinder, the counsel for the applicant submitted that the provisions of Sections 18(4) and (5), 19 and 23 of the Act are applicable. Sections 9
and 11 of the Act will apply only if the mark is advertised before acceptance under Section 20(1) proviso. There has been violation of the provisions of
the Act and therefore, the mark is wrongly made. The arguments advanced by the Respondent for the submission that the two applications for a single
mark is a fallacious argument. The date of user is false. Section 46 of the Act is applicable to the case on hand.
61. The deed of assignment has been executed on 9.6.2001 for an unregistered trade mark which is not valid. The principles of unregistered trade
mark in assignment would apply. The judgment relied on by the Respondent, namely, Astronaut case has no relevance to this case.
62. The provisions of Section 35 of the Indian Stamp Act is that the assignment deed if not property stamped and no consideration then the contract
itself is not valid. The first trade mark under No. 630661 registered on 20.11.2007 was wrongly made. The other two trade marks registered under
Nos. 1078116 and 1078117 were registered on 07.06.2005 and 12.05.2005. The Respondent has filed only 12 invoices in respect of these trade marks.
The Respondent has not mentioned as to whether the TM 23 for recordal of the subsequent proprietors has been filed or not. At page 68 of the
documents filed along with the counter-statement, the word 'Dadi' is mentioned in the invoice which again raises a doubt. Goodwill of a trade mark
and good will of a business are different. The request on Form TM 24 was filed only after the civil suit was filed. In view of the above, it is prayed
that the application for rectification be allowed as prayed for.
63. We have heard both the counsel and have carefully perused and considered the pleadings and documents.
64. The application before us being for rectification of the registered trade marks on various grounds, the first issue for consideration would be to
ascertain as to whether the applicant is a person aggrieved and has a locus standi to file and maintain an application for rectification. As per the
provisions of Section 21 of the Act any person may file an opposition to the registration of a trade mark, whereas as per the provisions of Section 47
and 57 of the Act, only a person who is aggrieved in some may or the other by the entry on the Register is a person aggrieved and has the right to file
a rectification application. The classic case is Powell's Trade Mark - 1893 (10) RPC 195. CA ""I should be very unwilling unduly to limit the
construction to be placed upon these words, because although they were no doubt inserted to prevent officious interference by those who had no
interest at all in the Register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly
limited, in as much as it is a public mischief that there should remain upon the register a mark which ought not to be there and by which many persons
may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation. Wherever it can be shown, as here, that the
applicant in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the Register, would or
might limit the legal rights of the applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that which, but for
the existence of the mark upon the register he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved"".
In Powell's Tm, it was held that ""persons who are aggrieved are persons who are in some way or other substantially interested in having the mark
removed from the register or persons who would be substantially damaged if the mark remained. It is very difficult to frame a narrow definition than
that (BOWEN L.J.)
65. A civil suit has been filed against the applicant which is an admitted fact by the Respondent and therefore the applicant is a person aggrieved and
has a locus standi to file and maintain an application for rectification. The applicants are dealing in the same line of business which again is a reason to
consider the applicant a person aggrieved.
66. We shall first deal with the first application under No. 630661. The counsel for the applicant placed before us the application No. 630661 and
another application No. 630647. The main contention of the applicant was that there were two applications for the same mark. In application No.
630647 there was a specific condition imposed by the Registrar that the registration of the trade mark shall give no exclusive right to use the device
and the word ' Himalayan Springs' whereas the Respondent has suppressed this fact and had obtained registration without any such condition
imposed. We find force in the arguments of the counsel. When there are two applications for the same mark and where condition is imposed in one
application, the same applies to the other especially when the marks are identical. In reply the counsel for the Respondent submitted that the Registrar
had imposed a condition of disclaimer of the device of mountains and mineral water in the acceptance orders and placed before us the said order
dated 29.4.2003. The counsel submitted that there was no suppression of the fact as there was an order to the extent of disclaimer which was not
found in the Trade Marks Journal. In this regard, as per the provisions of law, we are of the view that the very purpose of an advertisement in the
Trade Marks Journal is to provide complete information in respect of the trade mark so that public would receive the full and clear information about
the trade mark. If an advertisement does not give complete information or gives any incomplete material particulars, any person desirous of opposing
the same will be deprived of the opportunity of getting full information for effective opposition. In such circumstances, the incorrect advertisement is
required to be cancelled. The Respondents ought to have taken necessary steps to have the disclaimer condition properly incorporated in the Trade
Marks Journal for effective publication, in our considered view.
67. The application under No. 630647 was advertised before acceptance containing a specific condition that registration of the trade mark shall give
no right to the use of device of word 'Himalaya Springs & Device' when that be so the registration granted in application No. 630661 without such
condition is not correct which is in contravention of the provisions of the Act. That apart, when there is no exclusive right to use the word or device of
Himalaya for water which is descriptive of the goods, then the other two trade marks, namely under Nos. 1078116 and 1078117 - word mark -
Himalayan in class 32, the registration would not have been possible. The registration obtained therefore is in bad faith.
68. We shall now deal with the issue as to the registration obtained in contravention of Section 9 of the Act, which is the absolute ground for the
refusal of the registration. Section 9(1) contains three such clauses regarding the question of distinctiveness of the trade marks (1) Marks which are
devoid of distinctive character (2) Marks consisting of designation which are descriptive - 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 are prohibited registration and (3) Marks in common language or in established practices of trade - marks which have become
customary in the current language or in the bona fide and established practices in the trade.
69. A trade mark whether it is descriptive or whether they are suggestive must be decided with respect to the articles to which they are applied and in
usual course the mark is to be considered as a whole. The word or mark has to be considered in relation to the goods to which the mark is applied.
The impression or idea being conveyed to the ordinary public who purchase these goods are also to be considered while granting registration.
70. The trade mark consists of the words expression HIMALAYAN or HIMALAYA o from the HIMALAYAS which merely serves the purpose of
designating the kind, quality and geographical origin of natural water sourced from the Himalayan maintain and as such is purely descriptive and
devoid of any distinctive character as a trade mark to confer any exclusive right in any person. There are geographical indications to denote the
geographical origin of the goods in question and are incapable of even acquiring secondary meaning in relation to natural water irrespective of any
alleged length and extent of the use by any person. The expression Himalaya is commercially used by various traders in respect of natural water
sourced from the Himalayas. The impugned registration has therefore been wrongly obtained without any condition as to the disclaimer for the
expression Himalayas.
7 1 . As per the provisions contemplated under Section 9(1)(a) of the Act the registration of trade marks which are devoid of any distinctive character
are prohibited. A mark which has direct reference to the character or quality of the goods is considered as inherently not capable of distinguishing.
The mark is said to be distinctive by use. But in this case on hand, the expression Himalayan is descriptive and by long use cannot be said to have
acquired distinctiveness or is capable of acquiring distinctiveness.
72. On the perusal of the Respondent's products it is admitted as Himalayan, natural mineral water, bottled at source. Also described in their
packaging that Himalayan Natural Mineral water is sourced at the foothills of Himalayas and therefore it is one of the purest form of water. The word
Himalayan for Natural Mineral water, sourced from Himalayas is used in a directly descriptive source and accordingly the use of the impugned word
cannot be claimed to be used as a trade mark and the registration granted cannot sustain.
7 3 . The Registration has been obtained in respect of mineral water. The word Himalayan cannot be used in respect of water from any places other
than Himalayas and the use of the word by others would be deceptive and will amount to false trade description. As it is common trade practice to
indicate the name of the sources from where the product is sourced to denote its origin.
74. As regard the 1st application under No. 630661, the registration had not imposed any condition whereas there is disclaimer condition is another
identical application under No. 630647, which could be said that there has been a non application of mind by the Registrar. That apart where there is a
specific disclaimer as to the use of the device and word Himalayas, the registration under No. 1078116 & 1078117 for the word per se Himalayas
could also not have been granted.
75. The registration, therefore, granted is in contravention of the provisions of the Act. We are of the opinion that in such circumstances the trade
marks ought to be expunged.
76. The registration granted in our opinion as already held is in contravention of the provisions of the Act, the entry therefore, is made without
sufficient cause. The registration herein is in violation of the provisions of Section 9 of the Act which is an absolute ground for refusal of the
registration . The mark, therefore, ought to be removed as the entry is wrongly remaining on the Register.
77. The purity of the Register is to be mainly considered while administering the trade mark. It is always the duty of the Court or the Tribunal to
protect the public as well to protect the rights of the trade marks owners to maintain the purity of the Register. Here the trade mark concerned is too
descriptive and has a direct reference to the goods so it does not fulfill the functions of a trade mark. In view of the above, we are of the view that the
trade marks ought to be removed.
78. For the reasons stated above, we are of the view that the trade marks are to be expunged from the Register. Accordingly the applications for
rectification are allowed on the lines that the Registrar is directed to remove / cancel the registration granted under Nos. 1078116 and 1078117 and in
respect of registration granted under No. 630661, a condition shall be imposed to the effect that ""registration does not confer any exclusive right to the
use of the device of mountain or the word ""Himalayan"" and that the word Himalayan shall be used only in respect of water sourced from the
Himalayan mountain"". The above three applications for rectification are allowed, with no order as to costs.
