1988 PLP 919 (CLC)

‑‑‑Ss.10 & 76‑‑Trade mark, registration of‑‑Objection to‑‑Registrar of Trade Marks on basis of evidence produced before him reached the conclusion that word "Thadal" had become distinctive of the goods of respondent by extensive use of that word on product and by advertisement in papers etc. ‑‑Conclusions reached by Registrar neither arbitrary nor contrary to law, held, could not be interfered with by High Court in appeal. AIR 1962 Bom. 88 ref. Sultan Ahmad Sheikh for Appellant. Jamiluddin for Respondent No.l Nemo for Respondent No.2. Date of hearing: 5th October, 1987. The above noted three Misc. Appeals are filed by Malik Imamuddin, Proprietor of Samaran Food Products, Nawabshah, against a consolidated order of Registrar of Trade Marks dated 16‑7‑1985. By the impugned order, the Registrar allowed opposition proceeding No.233 of 1983 filed by Respondent against the Trade Mark Application No.72931 dated 17‑11‑1980 filed by appellant for registration of a label consisting of various decorative matter including the words 'SAMARAN THADAL' and English letter 'S' in a circle, and directed the appellant to delete the word 'THADAL' from the applied mark. The Registrar by the same order also dismissed the two opposition No.199/83 and 30/84 filed by the appellant against Trade Mark Application No.78049 and 77471 filed by respondent for Registration of mark 'THADAL'. The following facts may be stated here which are relevant for disposal of above appeals. The appellant in the above case applied for registration of a label consisting of various decorative matters including the words "SAMARAN THADAL" and English Alphabet 'S' in a circle, under No.72931 dated 17‑11‑1980 in respect of syrup, sharbat and squashes in class

32. The above application was opposed by the respondent who filed Opposition No.233/84 on the ground that 'THADAL' is a mark which was adopted by them long ago in respect of the syrups produced by them and which was already registered in their favour but it has been dishonestly adopted by the appellant to prey upon the goodwill of respondent. It may be mentioned here that a label consisting of the word 'THADAL' alongwith other decorative material was registered in favour of respondent in the year 1974 in class 32 in respect of syrup, squashes, sharbat etc. with a disclaimer of the word 'THADAL;. The respondent it appears subsequently applied for registration of another label consisting the words 'THADAL' Mashroob i‑Mehran and artistically written words 'MD' under No.77471 and under No.78049 on 5‑8‑1982 and 10‑8‑1982 respectively, without disclaimer of word 'THADAL' and urged that with the passage of time and extensive use of this mark on their product the word 'THADAL' has become distinctive of the goods of respondent. These applications filed by respondent for registration of the label with the words 'Thadal Mash roob‑e‑Mehran' were opposed by the appellant under Opposition No.199/83 and 30/84. The learned Tribunal heard all the three applications together and by a consolidated order dismissed the two oppositions filed by appellant against the registration of the trade mark applications of the respondent while the opposition filed by the respondent against the trade mark application of the appellant was upheld. As a result of the above decision the Registrar ordered that T.M. Applications No.77471 and 78049 filed by the respondent for registration of their trade mark shall proceed to registration after the expiry of the appeal period, while appellant was directed to file an amended label of their Trade Mark after deleting the word 'THADAL' therefrom . Mr. Sultan Ahmad Sheikh, the learned counsel for the appellant contends that the registration of the word 'THADAL' in the two labels of the respondent could not be permitted in view of Section 6(1) (e) of the Trade Marks Act as the word THADAL directly refers to the quality of the goods. It is not disputed that the word 'THADAL' applied for registration both by the appellant and the respondent is in respect of goods in class 32 namely syrups. The contention of the learned counsel for the appellant in all these cases is that 'THADAL' is a 'Sindhi' word which is equivalent to a drink and as such it is not capable of registration. The learned counsel in support of his contention has referred to the meaning of 'Thadal' as given in Sindhi/ English dictionary of words. According to the definition in Sindhi/ English dictionary word 'Thadal' means a refrigerant or a cooling draught. It is also contended by the learned counsel for the appellant that the fact that the original registration of the label of respondent in the year 1974 was granted subject to disclaimer of the word 'THADAL' indicates that the appellant was not entitled to claim proprietary right in respect of the word 'THADAL' Learned counsel for the respondent on the other hand contended that although respondent in the original application for registration of label which was allowed in 1974 had disclaimed the word 'THADAL' but such disclaimer on their part could not preclude them from claiming the registration of that word as a part of their mark subsequently, if they are able to establish that it has become distinctive of their goods on account of extensive use. It is also contended by the learned counsel for the respondent that the word 'Thadal' is an obscure word which is not understood in its dictionary meaning even by a large majority of people in Sind while in other provinces of Pakistan, namely, Punjab, Baluchistan and N‑WFP, it is not at all understood in its grammatical sense but is only understood as a product of respondent. Additionally, it is contended by the learned counsel for the respondent that the dictionary meaning of 'Thadal' has no reference to the quality 'of the goods namely the syrup produced by respondent but is at best refers to the effect which may be produced on a person using the same. On these premises it is contended that neither the registration of the word 'Thadal' as a trade mark is prohibited nor it offends against the provisions of Sections (1)(e) of the Act. From the record of the case it is sufficiently born out that respondent led cogent evidence before the Registrar to establish that they are using the mark 'Thadal' on their product from 1973. According to sale figures furnished by them before the tribunal in respect of their product bearing the mark 'THADAL' there has been a steady rise in the sale of their product from 1973 upto 1982. For instance in the year 1973 the total sale of their product stood at Rs.13,000 which after gradual increase year by year stood at Rs.10,17,490 in the year 1981. As against this the appellant led no evidence before the tribunal to show that they ever used or marketed any product under the mark 'Thadal'. The only Opposition of the appellant against the registration of 'THADAL' as a trade mark in favour of the petitioner is that this word is not capable of being registered as it is a dictionary word and refers to the quality of the drink prepared by the respondent. In support of his contention learned counsel for the appellant has referred to the (Banolia's case P L D 1976 Kar 544 and Electric case 1959 RPC

383. The aforesaid cases relied by the learned counsel for the appellant are distinguishable on facts and are not relevant in the facts and circumstances of the present case. The Trade Marks Act does not completely prohibit registration of words which are suggestive of quality of such goods as a trade mark if it is established that such mark has become distinctive of the goods and their grammatical or dictionary meaning has acquired a secondary meaning. Reference in this connection may be made to the cases of Blue Paraffill's case 1977 RPC 473, Hot point Electric Heating Company (Hot point's case) 38 RPC

64. In the matter of Burrough and Welcome and Co (Tabliod's case) 21 RPC 217, Elliott Optical Company Ltd. 69 RPC

169. The Seven Up Company v. Registrar of Trade Mark (Happi's case) 1984 C L C 3249. In addition to above, the learned counsel for the respondent rightly contended that the word 'TAADAL' though a word of Sindhi language, is barely understood in its natural grammatical meaning by the majority of the people in the country. It cannot be disputed that Trade Marks Act is a central Act and in order to render a word incapable of being registered as to trade mark in view of Section 6(1) (d) of the Act it must be shown that the word in its natural meaning is understood by the people at large throughout the length and breadth of the country. Frankly speaking, neither I nor the learned counsel for the parties were aware of the word 'Thadal' before it was read out from the dictionary in Court. In this connection a very interesting case from Indian jurisdiction reported as J.L. Mahta and others v. Registrar of Trade Marks (AIR 1962 Bombay 88) may be referred here which deals with a somewhat similar situation. In that case the word 'Sulekha' which was registered in connection with fountain pen, nib etc. manufactured by the petitioner in that case and which in Sanskrit meant good writing was sought to be removed from the Register of Trade Marks by the Registrar of Trade Marks on the ground that it was not capable of being registered as a Mark as it is descriptive of the quality of the goods in respect whereof it was registered as a trade mark. The learned Judge while disagreeing with the conclusion of Registrar of Trade Marks that the word 'Sulekha' being descriptive of the quality of the goods was not capable of being registration as a trade mark, observed as follows:‑ "I agree with Monier when he says that the word "Lekha" means "a writing" as being at derivative of the word "likh" but that it was never found to have been used in that sense in any of the publications, either Sanskrit or otherwise. If this is the kind of meaning of the word "lekha" , there is no wonder that none of the people knows about it, and, therefore, as there is a certain amount of obscurity about that meaning, the word "lekha" cannot be interpreted to mean "writing" so as to be descriptive of the goods in question. The obvious meaning of the word "lekha", as pointed out above and as recognised by majority of the dictionaries, is only "a line or a streak" corresponding with the meaning of the word "Rekha" and 'Sulekha" as much as "Surekha" in common parlance would only mean a female with a well‑proportioned body, and yet the word "lekha" as such does not seem to be known to all classes of people in the country. If it were, Mr. Gupte the learned counsel for the Registrar of Trade Marks, could have certainly known it, but he frankly admitted that in the Marathi language, he had never heard the word "lekha" being used at all and that is corroborated by the fact that the Marathi‑English dictionary also does not refer the word 'Lekha'. The reference to any word or words descriptive of the goods as used in section 6 of the Trade Marks Act would, in my opinion, only mean such word or words as would be known to the people all over the country and not only to some sections of the people in some parts of the country." I am in respectful agreement with the ratio laid down in the above case and am of the view that the objection taken by the appellant in the present case to the registration of the word 'Thadal' cannot be upheld. The Registrar of Trade Marks in the impugned order, on the basis of evidence produced before him reached the conclusion that the word 'THADAL' has become distinctive of the goods of respondent by extensive use of this word on the produce and by advertisement in papers and brochures. These conclusions reached by the Registrar are neither arbitrary nor contrary to any express provision of Trade Marks Act so as to call for interference by this Court. In so far the application for registration of the word 'Thadal' as a trade mark of appellant is concerned, the Registrar observed that appellant led no evidence to show that they ever used this mark on their product. This aspect of the case is not disputed by the learned counsel for the appellant. In these circumstances the order of Registrar upholding the opposition of respondent to the registration of the above mark in favour of appellant, and allowing registration of the same in favour of the respondent is not open to any exception. As a result of above discussion these appeals fail which are accordingly dismissed but there will be no order as to costs. H . B . T . /I‑33/ K Appeals dismissed.