The Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd.

The Registrar of Trade Marks Vs.
Ashok Chandra Rakhit Ltd.

AIR 1955 SC 558

Full Bench

In 1897, one Durga Charan Rakhit adopted as his trade mark (for selling Ghee), the following mark:

shree

The mark has ‘Shree’ written on the top in bold Bengali character, having below it a figure with the word “Shree”, the word ‘Trade’ written in a slanting manner on the left side and the word ‘Mark’ written in a slanting way on the right side. The words “Shree Durga Charan Rakhit” written at the bottom in Bengali characters.

In 1932, Respondent was incorporated as a company and acquired the goodwill of the business of Mr. Durga Charan Rakhit and right, title and interest in the said mark.

The Respondent filed an application towards registration of the mark. Registrar proposed that there should be a disclaimer on the word ‘Shree’. Respondent did not agree and argued that it’s ghee is commonly known by the trade mark ‘Shree’. Mark was duly registered without any disclaimer.

Subsequently, Registrar found that the word ‘Shree’ was used by Hindus as an auspicious symbol and that it was not adapted to distinguish. A practice became established in the Registry whereby the word ‘Shree’ was either refused registration or a disclaimer was put on it.

Registrar issued a notice calling upon the Respondent to show why the register should not be rectified by entering a disclaimer of the exclusive right in regard to the word ‘Shree’. The Registrar came to the conclusion that ‘Shree’ was not adapted to distinguish and directed rectification of the register by inserting a disclaimer on the word ‘Shree’.

Respondent preferred an appeal to the High Court. Court took the view that ‘Shree’ was a word which had numerous meanings and it would be impossible for any trader to contend that he had an exclusive right to the use of ‘Shree’. High Court went on to hold that there was no ground whatsoever for the order made by the Registrar as the Respondent had never claimed that it had any right to the exclusive use of the word ‘Shree’. High Court allowed the appeal.

On Appeal, the Supreme Court observed:

 Registrar found that ‘Shree’ was not adapted to distinguish. High Court also took the same view.

 As a consequence of disclaimer, Respondent was left to protect its rights by passing off actions. Material clearly indicated that the Respondent was claiming a proprietary right to ‘Shree’. Respondent called its mark ‘Shree’ and claimed that the mark ‘Shree’ was well known. It’s clear that Respondent was claiming right to the exclusive use of the word ‘Shree’.

 Respondent did not wanted any other merchant to use the word “Shree” in respect of ghee and the Respondent thought that the registration of its trade mark with the word ‘Shree’ would give it a right also to that word and its intention was to launch infringement actions against any other trader who might happen to use the word “Shree” either alone or as part of his trade mark in respect of ghee.

 Where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor to the use of any particular word or name contained therein apart from the mark as a whole. The truth is that the label does not consist of each particular part of it, but consists of the combination of them all.

 It was clear that the reason for resisting the disclaimer in this particular case was that the company thought, that the registration of the trade mark as a whole would give it a right to the exclusive use of the word ‘Shree’ as if registered separately and that it would be easier for Respondent to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the Respondent.

 The High Court was not drawn to an important consideration, i.e. the possibility of Respondent claiming a statutory right to the word ‘Shree’.

The appeal was allowed.

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