P L D 1969 Dacca 314 (PLP)

A. S. CHOWDHURY, J.‑This is a Trade Mark Appeal from a judgment passed by a learned Single Judge of this Court, Abdulla, J. on the 29th April 1966. Material facts necessary for the determination of the: questions raised in this appeal are as follows‑ The appellant Sadhana Aushadhalaya Ltd., started manufac turing the medicine called "Saribadi Salsa" in 1914 and for more than half a century it has been continuing in its manu facture and business of the said medicine without interruption. In 1942, that is about 25 years ago, the appellant Sadhana. Aushadhalaya obtained registration of the Trade Mark "Saribadi Salsa" under section 16 (2) of the Trade Marks Act (herein after called `The Act', the number being 9031. Respondent Nutun Chandra Sinha, proprietor of Kundeswari. Aushadhalaya filed an application in this Court out of which this appeal arises. His case is that he is also a manufacturer and dealer in Ayurvedic medicine including the medicine "Saribadi". He claims to have manufactured "Saribadi Salsa" from 1935 to 1957 and then he manufactured "Saribadi" up to 1960. There after he stopped manufacturing the same because of the various litigations started by the appellant. His grievance is that the appellant has instituted a suit against him for permanent injunction. In order to resist this extravagant claim of the appellant Sadhana Aushadhalaya, respondent‑petitioner Nutun Chandra filed the present application. The learned Judge set out the prayers of respondent Nutun Chandra as printed at page 152 of the Paper Book as follows; "(a) The Register be rectified by removal of the Trade Mark in respect of "Saribadi Salsa" from the register. (b) The Register be rectified by adding a disclaimer to the effect that `Registration of the Trade Mark shall give no exclusive right to the use of the word "Saribadi Salsa".' (b) (1) Or the Register be rectified by adding a disclaimer to the effect that register of the Trade Mark shall give no exclusive right to the use of the "Saribadi" . . . ." After considering all aspects of the case and reviewing the evidence led before him, Abdulla, J. rejected the prayers set out in (a) and (b). In rejecting the prayer set out in clause (a) learned Judge observed: "Thus it is clear that the respondent was using the trade mark since 1914 and this register cannot be now reopened more than seven years after it was registered in accordance with the provisions of section 24 of the Trade Mark Act. Thus issue No. 1 that is, so far as it means removal of the Trade Mark from the Register is decided in favour of the defendant, Sadhana Aushadhalaya, that is to say, the Trade Mark as registered cannot be interfered with at the instance of the plaintiff. This claim is barred. This fact having been decided, the prayer of the petitioner to the effect that the register be rectified by removal of the trade mark in respect of 'Saribadi Salsa' from the Register must be refused." After having rejected the prayer (a) the learned Judge proceeded to consider the prayer set out in clause (b) and recorded his finding in the following terms: "I accept the contention of the defendant‑company that the combination of the word "Saribadi Salsa" is a coining by Dr. Jogesh Chandra Ghose, the founder of defendant company. Moreover, I have already held that the defendant company is entitled to the exclusive use of the coined words "Saribadi Salsa" on the further ground that it had been in continuous use by the defendant‑company since 1914 according to the provisions of the proviso to section 6." His Lordship's further observation is as follows: "Thus the prayer (b) namely, the register be rectified by adding a disclaimer to the effect that Registration of the Trade Mark shall give no exclusive right in the use of the word "Saribadi Salsa" is rejected." After having rejected the two prayers the learned Judge proceeded to consider the prayer set out in clause (b) (1). It is necessary to recall here again that the respondent Nutun Chandra Sinha claims that his firm Kundeswari Aushadhalaya had been selling the medicine called "Saribadi Salsa" for about twenty- two years but on the objection raised by the appellant Sadhana Aushadhalaya the word "Salsa" was dropped. At present he has stopped manufacturing the medicine in consequence of the pending litigations. His prayer, therefore is for adding a disclaimer to the effect that the Registration of the Trade Mark "Saribadi Salsa" does not give the appellant Sadhana Aushad halaya right to the exclusive use of the word "Saribadi". Abdulla, J. found this prayer to be reasonable and in exercise of the powers conferred under section 13 of the Act, allowed this prayer. In doing so, his Lordship observed: " . . . . .In my opinion a disclaimer can always be entered on the register provided the circumstances mentioned in section 13 are fulfilled. Here in my opinion the Trade Mark is covered by subsection (b) of section 13, that is it contains the word "Saribadi" which is a matter common to the Trade and also is of non‑distinctive character." This part of the order is under attack in this appeal. As a result of rejection of the prayers set out in clauses (a) and (b), it is clear that the appellant Sadhana has right of using the Trade Mark "Saribadi Salsa" to the exclusion of all others. The only question now is whether a disclaimer is still necessary to declare that the appellant Sadhana has no exclusive right to the use of the word "Saribadi". Finding arrived at by Abdulla, J, is that the appellant has exclusive right to the use of the Trade Mark "Saribadi Salsa". This means that the appellant shall have exclusive right to that Trade Mark as a whole and not to a part of it. We are therefore of opinion that the appellant Sadhana Aushadhalaya has no exclusive right to use the word "Saribadi" only. Position is so clear that Nutun Chandra will not be pre judiced if such a disclaimer is not added. A disclaimer is added to define the right arising out of registration in a doubtful case, but when such a right is clear even without it no express declaration by means of a disclaimer is necessary. Even without it, Nutun Chandra will be entitled to such rights as will be ensured by a disclaimer. On the other hand its addition may give rise to an impression that a disclaimer is the remedy whenever someone seeks to make an extravagant claim. To create such a situation will be most undesirable commercially. A disclaimer has to be added only on good reasons. It should be added when its omission works injustice. This Trade Mark has been on the Register for 25 years since 1942 without a disclaimer and the respondent had also been selling his medicine for about 30 years. About ten years ago the res pondent has however dropped the word "Salsa" and at present he has stopped its manufacture as a result of the threat of the appellant. Although not expressly stated, it appears that the learned Judge allowed the disclaimer on the ground that Sadhana Aushadhalaya was claiming exclusive right of the use of the word "Saribadi" also. We have already indicated our respect ful agreement with him that Sadhana Aushadhalaya has exclusive right to the use of the trade mark `Saribadi Salsa' and we also agree with him that Sadhana has no such exclusive right in respect to the word 'Saribadi' alone. That being so, speaking with great respect, it appears to us that such a disclaimer is unnecessary and should not therefore be allowed as it will unreasonably burden the register and make it clumsy, for, it will open the floodgate for prayers for unnecessary disclaimers whenever someone chooses to institute a suit, however, frivolous it may be. It does not appear to have been argued before Abdulla, J that unnecessary disclaimers need not be added. The position in law has been clearly stated in the case of In re: Albert Baker & Co.'s Application, In re: Aerated Bread Company's Application ((1908) 2 Ch. 86). In that case Eve, J. observed "I do not think, therefore, there is any authority which compels me to hold that whenever a claim to monopoly is put forward I ought to impose the condition of a disclaimer, and in the absence of such authority I think I should be doing wrong to adopt or lay down such a rule." It has been clearly laid down by Eve, J. that disclaimer should not be entered in the register against a trade mark whenever a claim of monopoly is put forward. The aforesaid case has also been approvingly referred to in the case of In re: Cabdurt Brothers' Application ((1915) 2 Ch. 307). In that case Sargant, J. observed "It seems to me manifest that the registration of this trade mark cannot give rise to any rights except a right to the mark as a whole. It cannot give any statutory rights at all in respect of the word "Tudor"; and, that being so, it is inexpedient to place on the register an unnecessary disclaimer, because the effect so doing is to unsettle the law and give rise to doubts in other cases, where such disclaimers are not inserted." In that case the trade mark applied for registration consisted of the words "Tudor Chocolates made by Cadbury." It was held that registration of the aforesaid trade mark as a whole would not give exclusive right to the use of the word "Tudor" only. It was found to be so clear, that it was held in that case that no disclaimer was necessary. Similarly in this case the trade mark "Saribadi Salsa" will not give rise to the right of the exclusive use of the word "Saribadi". Referring to a practice obtaining in the Office of the Registrar of allowing such unnecessary disclaimers Sargant, J. further observed in that case; "In my judgment that practice is one which is far too wide and would result as a general rule in placing on the register a vast crop of unnecessary disclaimers." It will, therefore, be noticed that a step which may result in placing on the register a vast crop of unnecessary disclaimers has been clearly and emphatically disapproved. Mr. Sen, learned Advocate for the respondents, relies on the following observation of Das, J. occurring in a decision of the Supreme Court of India in the case of the Registrar of Trade Mark v. Ashok Chandra Rakshit Ltd. (A I R 1955 S C 558) "The real purpose of requiring a disclaimer is to define the rights of the proprietor under registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registra tion of the trade mark." In reply to our query, Mr. Sen submits that Abdulla, J. has not assigned any reason for allowing the disclaimer but apparently it is to prevent Sadhana Aushadhalaya from making extravagant claim to the exclusive use of the word "Saribadi" alone. Since ‑we have reached the irresistible conclusion that as a result of the registration of the Trade Mark `Saribadi Salsa', no claim to ‑the exclusive use of a part of it, namely, "Saribadi" can be made by Sadhana Aushadhalaya, we are of opinion that no disclaimer is necessary. Das, J. was dealing with the word "Shree" which is in common use and felt the need of a disclaimer, but the l facts of the case before us are easily distinguishable. In this case we have sufficiently indicated that rights of the parties are well‑defined, we cannot, therefore, find any reason whatsoever for Sadhana Aushadhalaya to claim exclusive right to the use of the word "Saribadi" only because of the registration of the Trade Mark "Saribadi Salsa". That being so, we are of opinion that no disclaimer should be allowed in this case. Mr. Saha has attacked the maintainability of the petition ‑filed by Nutun Chandra on the ground that such a petition cannot be made under section 46 of the Act, read with section 13, 25 years after the registration. He points out that the prayer is in fact, made on the basis of section 9 and the allegations made in the petition do not bring the case within clause (b) of section

13. Since we have, on a consideration of the merits of the case, found that a disclaimer is wholly unnecessary in this case, we are not called upon to express any opinion on the points of maintainability. Before we part with this judgment we must express our appreciation of able and helpful arguments of Mr. Saha, 'learned Advocate for the appellant and Mr. Sen. learned Advocate for the respondent. For the reasons stated above, the appeal is allowed and the impugned order allowing the disclaimer is set aside. We leave the parties to bear their own costs. MAHMUD HOSAIN, J.‑I agree. S. B. Appeal allowed.