Anda di halaman 1dari 16

IN THE HON’BLE HIGH COURT OF CALCUTTA

THE IMPERIAL TOBACCO CO. OF INDIA LTD. APPELLANT


V.
THE REGISTRAR OF TRADE MARKS AND ANOTHER
RESPONDENTS

Memorandum on behalf of the Appellant

SUBMITTED BY
PANKAJ SHARMA
SEM. – VI
ROLL NO. – 100
TABLE OF CONTENTS

List of Abbreviations................................................................................................
Index of Authorities……………………………………………………….............3
Statement of Jurisdiction..........................................................................................
Statement of Facts………………………………………………………............…4
Issues Raised………………………………………………………………......……5
-Whether geographical name “Simla” has acquired distinctiveness within a short period of
3 years on account of extensive sale and advertisement?
Summary of Arguments…………………………………………………….........….6
Arguments advanced………………………………………………..................….8
Prayer for Relief……………………………………………………..........……...11
List of Abbreviations

& AND
§ Section
¶ Paragraph
AC Appeal Cases
AIR All India Reporter
Anr. Another
Art. Article
Co. Company
Del. Delhi
Ed. Edition
Etc. Etcetera
HC High Court
SCC Supreme Court Cases
SC Supreme Court
Index of Authorities

Acts/Rules/Orders:

 Trade and Merchandise Marks Act, 1958

Books:

 B.L. Wadehra, Law Relating to Intellectual Property, Universal Law Publishing Co.
 Lionel Bently & Brad Sherman, Intellectual Property Law, Oxford Publication.
 P. Narayanan, Intellectual Property Law, Eastern Law House.
 VK Ahuja, Law Relation To Intellectual Property Rights, Lexis Nexis 2nd ed 2013
 Halsbury's Laws of England Third Edition, Volume 38, Art. 880
 Kerly's Law of Trade Mark and Trade Names (10th Edition)

List of Cases Referred


 Bailey and Ltd. v. Clark
 Son and Morland Ltd., (1938) 55 RPC 253.
 Stilton Cheese case, 1967 RPC 173 at pp. 180-81.
 Scotsman case, 1965 RPC 358 at p. 361
 Stone Ale case (1889) 6 RPC 404 at p. 413
 Roman Holiday case, 1964 RPC 129
 The Champagne case 1961RPC 116 at p. 127
 Berna case (1915) 32 RPC 113
 Itala case (1910) 27 RPC 493

Statement Of Jurisdiction

The Appellant humbly submits this memorandum of an appeal before the Honorable Court.
The Application invokes its jurisdiction under Section 109 of The Trade And
Merchandise Marks Act, 1958
Statement Of Facts
The Appellant applied for Registration of the mark “Simla” under Part A of the Register.

A Show Cause Notice was issued to the Appellant stating that the word “Simla” is a
geographical name and registrable only on very strong evidence of distinctiveness.

On reply to the show cause notice, the Appellants provided evidence regarding extensive
sale and advertisement, that was rejected as the mark should have acquired distinctiveness
on the date of making the application.

The Appellant kept quiet for two years before a new application was filed along with 22
affidavits from various persons under Part B of the register on the same date as the previous
one was withdrawn.
After the rejection of which, this appeal was filed.ISSUES RAISED

 Whether geographical name “Simla” has acquired distinctiveness within a short


period of 3 years on account of extensive sale and advertisement?

Whether the test of Clause (b) of Section 9(5) has been satisfied as adapted to
distinguish or is in fact capable of distinguishing the goods of the appellant from
others ?
SUMMARY OF ARGUMENTS

Whether geographical name “Simla” has acquired distinctiveness within a short


period of 3 years on account of extensive sale and advertisement?

-The geographical name “simla” has been acquired distinctiveness within a short period of
3 years on account of extensive sale and advertisement. During the period of April 1960 to
June 30, 1963 "The applicants have used and are continuing to use the accompanying trade
mark extensively throughout India having sold 42,2100000 cigarettes under the
accompanying trade mark and applicants had also incurred advertisement expenses of over
Rs 15,50,000 during that period for popularising the accompanying trade mark.
In support of this application for registration the appellant filed 22 affidavits from different
persons, who could be classified as (1) the employees of the appellant. (2) the dealers of the
appellants' tobacco, and (3) the consumers of Simla cigarettes.
Arguments Advance
The trade mark "Simla" with the label is composite in character. Its essential feature is the
word Simla. ''Simla" is neither an invented word nor is it a word having a dictionary
meaning. It is a well known hill-station of India. Its geographical signification is, therefore,
plain and unequivocal. The snow-clad hills in outline on the label makes the geographical
significance inescapable. The appellant's whole case now rests on 3 years prior use of this
trade mark before the date of the application for registration with the assertion that the
geographical name has acquired distinctiveness and so qualified for registration. tobacco
was neither grown nor manufactured in Simla could not deceive any one because it was a
well known fact, by the remark that it was a fact which would be known only to those
people who were living in the neighbourhood of Simla and who were equipped with all the
information of the industrial and agricultural resources of the different parts of India.
Kerly's Law of Trade Mark and Trade Names
It will be apparent on comparing Section 10 with Section 9 that so far as regis-
trability is concerned, the differences between Part A and Part B are (1) that in the
former the mark must be "adapted to distinguish" and in the latter "capable of
distinguishing" (the context being virtually identical); and (2) that in the case of
names, signatures or words which do not fall within paragraphs (a) to (d)
of Section 9(1), so that registration in Part A ran only be granted upon evidence of
distinctiveness such evidence is not required for Part B if it is possible without
evidence to saitsfy the tribunal that the mark is capable of distinguishing the goods.
Halsbury's Laws of England Third Edition, Volume 38, Art. 880
Requirements for registration in Part B.-- To be registrable in Part B of the register,
a mark must be capable of distinguishing goods for which it is registered and in
judging of such capacity the tribunal may take into account both the inherent
qualities of the mark and the extent to which user or other circumstance has
rendered it so capable."
9. Requisites for registration in Parts A and B of the register.
(1) A trade mark shall not be registered in Part A of the register unless it contains or
consists of at least one of the following essential particulars, namely:--
(a) the name of a company, individual or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business;
(c) one or more invented words;
(d) one or more words having no direct reference to the character or quality of the goods
and not being, according to its ordinary signification, a geographical name or a surname or
a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in
India;
(e) any other distinctive mark.
(2) A name, signature or word, other than such as fall within the descriptions in clauses (a),
(b), (c) and (d) of sub- section (1), shall not be registrable in part A of the register except
upon evidence of its distinctiveness.
(3) For the purposes of this Act, the expression" distinctive" in relation to the goods in
respect of which a trade mark is proposed to be registered, means adapted to distinguish
goods with which the proprietor of the trade mark is or may be connected in the course of
trade from goods in the case of which no such connection subsists either generally or,
where the trade mark is proposed to be registered subject to limitations, in relation to use
within the extent of the registration.
(4) A trade mark shall not be registered in Part B of the register unless the trade mark in
relation to the goods in respect of which it is proposed to be registered is distinctive, or is
not distinctive but is capable of distinguishing goods with which the proprietor of a trade
mark is or may be connected in the course of trade from goods in the case of which no such
connection subsists, either generally or, where the trade mark is proposed to be registered
subject to limitations, in relation to use within the extent of the registration.
(5) In determining whether a trade mark is distinctive or is capable of distinguishing as
aforesaid, the tribunal may have regard to the extent to which--
(a) a trade mark is inherently distinctive or is inherently capable of distinguishing as
aforesaid; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is
in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.
(6) Subject to the other provisions of this section, a trade mark in respect of any goods--
(a) registered in Part A of the register may be registered in Part B of the register; and
(b) registered in Part B of the register may be registered in Part A of the register; in the
name of the same proprietor of the same trade mark or any part or parts thereof.

In regard to registration in Part B of the register, provisions have been made in


Sub-section (4) of Section 9. The essential conditions are that the mark in relation
to goods proposed to be registered is (1) distinctive or (2) if not distinctive, capable
of distinguishing the goods of the applicant from those of others. To be distinctive
(which means adapted to distinguish) or capable of distinguishing the goods as
aforesaid, there may be some inherent qualities or distinguishing characteristics in
the mark itself which may make it so distinctive or capable of such distinguishing
the goods of the applicant from others.
In the case of Tijuana Smalls' case1 where registration in respect of cigars was allowed in
Part B Tijuana is a town in Mexico with inhabitants over 2 lakhs Graham J. in allowing
registration in Part B held that the question whether a geographical word could be
registered was one of degree. These words whose primary signification is geographical and
where the geographical significance is so general and so likely to be adapted or desired for
use by more than one trader, it would be wrong, however distinctive they might in fact have
become ever to allow one trader by registration to seek to monopolise them (e. g. Yorkshire
or Liverpool). There are other 'geographical' words (e. g. North Pole) where, for one reason
or other, when considered as applied to the goods in respect of which it is sought to register
them, it is clear that the use is in fact clearly not geographical but fanciful, and was
therefore, at least, capable, particularly by use, of being distinctive in practice of one of
manufacturers' goods. Registration could, therefore, in such cases be allowed without
causing inconvenience to or encroaching upon the reasonable trading rights of other
manufacturers.
Simla was never a tobacco producing centre or likely to be so and there is no
chance or occasion for any prejudice being caused to other traders or
manufacturers. He also referred to the Trade Marks Journal published by the
Government containing advertisements of various geographical names for
acceptance: 'Sheemla' for agarbati, 'Gulmarg' for wire, 'Shalimar' for engineering
goods 'Kalighat' for biddies were cited and referred. In all such cases it appears that
the names prima facie are fanciful without geographical or ordinary signification
and at this stage it will not be proper to depend on those marks without further
material or evidence. The propositions of law in respect of geographical names
have been referred to above and in view of the imprint of snow clad hills in outline
in the trade mark 'Simla' the ordinary or geographical signification is obvious and

1 (1973 RPC 453).


patent even though it has no reference to the quality or place of origin of the goods
as at present advised.
The appellant has submitted affidavit evidence to prove that on the date of
application on July 20, 1963 the goods (cigarettes) introduced in 1960, have in
course of three years user reached fantastic figure of sale at over Rs. 1.14 crores
with advertisement costs of over Rs 15.50 lakhs, Mr. Chakraborty also filed an
application before us in support of his case that the sale figure has been constantly
increasing since along with costs of ad-vertisement.
'Distinctiveness' has been understood to mean 'some quality in the trade mark
which earmarks the goods so marked as distinct from those of other producers of
such goods'.
There can be little dispute that the acquisition of distinctiveness of a trade mark is a
long laborious and time consuming process. Even so, no time limit is fixed by
statute and in the British Act of 1919 two years bona fide user was considered
sufficient There may be a case where for sundry reasons, a trade mark may attain
the requisite distinctiveness within a "magically short period and it is not possible
to predicate or lay down any hard and fast rule about the period of time on the
expiry whereof only a trade mark by user can attain distinctiveness required under
the statute. Every case will depend on the attending circumstances and evidence
adduced in support of the acquisition of distinctiveness.
Section 2 (v) " Trade mark" means-- (i) in relation to Chapter X (other than section 81), a
registered trade mark or a mark used in relation to goods for the purpose of indicating or so
as to indicate a connection in the course of trade between the goods and some person
having the right as proprietor to use the mark; and
(ii) in relation to the other provisions of this Act, a mark used or proposed to be used in
relation to goods for the purpose of indicating or so as to indicate a connection in the course
of trade between the goods and some person having the right, either as proprietor or as
registered user, to use the mark whether with or without any indication of the identity of
that person, and includes a certification trade mark registered as such under the provisions
of Chapter VIII;
PRAYER FOR RELIEF

In light of the facts stated, arguments advanced and authorities cited, the Appellant,
humbly prays before the Honorable Court, to adjudge and declare that:

I. The Appellant in the suit pray for registering a trademark used as wrapper of
packets of cigarettes bearing the device of snow clad hills in outline with the
word 'Simla' written prominently in various panels of the label with small
inscription.

The Court may also be pleased to pass any other order, which the court may deem fit
in light of justice, equity and good conscience.

All of which is most humbly prayed.

Counsel on behalf of Appellant


Date: 6th April, 2017