Holding

A trade‑mark registration may be rectified to confine it to the specific goods actually used by the registrant; thus limiting the respondent’s “Charminar” registration to cigarettes is lawful and justified.

Summary

The appellant, Vishnudas Trading, had been using the mark “Charminar” for quiwam and zarda since 1973, while the respondent, Vazir Sultan Tobacco Co., owned a registration of the same mark for “manufactured tobacco” (Class 34) but only manufactured cigarettes. The appellant sought rectification of the respondent’s registration on the ground of non‑use for quiwam and zarda, and the Assistant Registrar limited the registration to cigarettes. The High Court set aside that order, holding that a registration cannot be split into sub‑classes and that the respondent’s rights extended to the whole class. On appeal, the Supreme Court examined the scope of Sections 46 and 56 of the Trade Marks Act, the distinction between a class and a description of goods, and the principle that a registration is not absolute when the registrant uses the mark for only a part of the class. The Court held that limiting the registration to cigarettes was proper because the respondent never used the mark for other articles in the class and allowing a monopoly over the whole class would be unjust. Consequently, the Court allowed the appeals, restored the rectification order and declined to address infringement issues.

Issues considered

The propriety of rectifying a trade‑mark registration under Sections 46 and 56 to limit its scope to specific goods within a broad class.
Whether a registration in a generic class (manufactured tobacco) can be confined to a particular article (cigarettes) when the registrant has not used the mark for other articles.
The interpretation of Section 8 of the Trade Marks Act regarding registration in a prescribed class versus specific goods.
The effect of non‑use of a mark for certain goods on the registrant’s exclusive rights over the entire class.

Legislation cited

Trade Marks Act, 1958s. 12, s. 18, s. 45, s. 46, s. 47, s. 56, s. 8
Trade Marks Rules, 1959s. 4th Schedule, s. Rule 22, s. Rule 24, s. Rule 26

Subjects

trade markrectificationnon‑useclass 34manufactured tobaccoexclusive rightsgoods descriptionregistration limitationSections 46 and 56

Judgment

VISHNUDAS TRADING AS VJDHNUDAS KISHENDAS A
v.
r
THE VAZIR SULTAN TOBACCO CO. LTD.,
HYDERABAD AND ANR.

JULY 9, 1996
B
[G.N. RAY AND G.B. PATTANAIK, JJ.]

Trade & Merchandise Marks Act, 195&-Sections 46 & 56-Application
for rectification on ground of non-use1-Respondent manufactwing only
cigarettes under a trade mark registered in respect of "manufactured tobac- C
co 1_Appellant ntanufactzuing quiwan1" and Zarda under the sa111e trade
1 11 1 11

mmk-Application for rectification of respondent's trade mark by appel-
lant-Whether can be allowed.

Trade & Merchandise Marks Act, 195&-Section J2_!'Goods or D
description of goods"-Significance of

Trade Marks Rules, 1959-4th Schedule-Class-Meaning of

The respondent No. 1 was manufacturer of cigarettes under the
brand name "Charminar". It had obtained registration of its Trade Mark E
under the Trade Marks Act, 1940 in respect of "mannfactured tobacco"
falling in Class 34 of the 4th Schedule to the Rules framed under the Trade
Marks Act, 1940. However, the respondent No. 1 never manufactured
anything other than cigarettes.

The appellant manufactured "Quiwam" and Zarda" since 1973 and F
had been using the trade mark "Charminar" for its products. The appellant
applied for registration of the trade mark" Charminar" under the
provisions of Trade and Merchandise Marks Act 1958 on which tlte
respondent No. 1 raised objections contending that it would conflict with
its registered trade mark. The Joint Registrar of Trade Marks held that G
the heading "manufactured tobacco" would include in its ambit "Zarda"
and Quiwam" and therefore, the objection of respondent No. 1 cannot be
waived.

The appellant, thereafter, filed two applications under Section 46
read with Section 56 of the Trade Mark Merchandise Marks Act, 1958 for H
329
3'.\0 SUPREME COURT REPORTS f199Gj SUPP. 3 S.C.R.

"' rt~rtiliration of rrgistt'red trade 111.ark of respondent No. 1 on the ground
tJ1at the respondent No.1 never 1nanufactured an31hing other than cigaret-
lrs and the said n1ark \\'as never used in respect of 11Zarda 11 or 1'Quh\-'an1".
The applications for rectification filed by the appellant were allowed by the
.-\s~·dstant Re~istrar, 'frade !\larks and the registration of the trade 1nark
in faYour of rcs1utndent No. 1 \Vas restricted to cigarettes.
B
Ou appeal to the High Court by the respondent No. l the Single
Judge, settiilg aside the order of the Assistant Regist.rar, Trade l\'larks
observed that the Assistant Registrar had 1nade a sub- classification of
"manufartured tobacc1{ occurring in class 34 \Vhich "'as not pern1issible.
c not
It was further held that for registration of an article under Class 34, it was
necessary to establish user of the trade 1nark.

On appeal, the Division Bench of the High Court confirmed the
order of the Single Judge holding that :

D (a) there could be no separate registration in respect of cigarettes
as class 34 spoke only of "n1anufactured tobacco".

(b) the Joint Registrar had already declined registration of the trade
mark as sought by the appellant and therefore, the registration in favour
of respondent No. 1 was conclusive and the applications for rectification
E not n1aintainable;

(cl respondent No. l's trade mark could not be removed or restricted
on the ground of non.user with reference to goods of different specifica·
tions such as "Quhvam" and Zarda 11

F Allowing the appeals, this Court

HELD : l. The rectification of the registration of the trade mark held
by respondent No. I, by limiting or confining the registration of trade mark
of the respondent no. 1 Company to particular goods, namely, cigarettes,
G in the facts and circumstances of the case, cannot be held as illegal or
unjustified. [358-H]

2.1. Registration of a trade mark cannot be held to be absolute,
perpetual and invariable under all circumstances. Section 12 of the Trade
and Merchandise Marks Act, I 958 prohibits registration of identical or
H deceptively similar trade 111arks in respect of goods and description of
VISHNUDAS'll~D. A"JVIDHNUDAS KJSHENDAS 1·. VAZlRSULTAN1DBACCOCO. LID. 331

goods which is identical or deceptively similar to the trade n1ark already A
registered. The expression "goods" and 11 description of goods 1' appearing in
Section 12(1) of Trade and Merchandise Marks Act, 1958 indicak that
registration n1ay be niade in respect of one or more goods or of all go,Jtls
confor1ning to a general dtscription. The Trade and l\.1crchandb:e i\'1arks
Act, 1958 has noted distinction bef\'t'een description of goods forn1ing a
B
genus and separate and distinctly identifiable goods under the genus in
various otht!r Section8 e.g. goods of san1e description in Section 46 of the
Trade and Merchandise Marks Act, 1958, Rules 12 and 34 of' the Trade
Marks Rules, 1959 and class of goods in Section 18 of the Trade and
Merchandise Marks Act, 1958, Rules 12 and 26 read with 4th Schedule to
the Trade Marks Rules 1959. The "class" mentioned in the 4th Schedule c
to the Trade !\·larks Rules 1959 n1ay subsulnt! or comprist! a nun1ber of
goods or articles which are separately identiliable and vendible and \Vhich
are not goods of the same desc.:ription as commonly understood in trade
or in common parlance. (357-G-H, 358-A-D]
D
2.2. I'vlanufactured tobacco is a c.:lass mentioned in Class 34 of 4th
Schedule of' the Trade Marks Rules, 1959 but within the said class, there
are nurnber of distinctly iclentiliable goods \Vhich are 1narketed separately
and also used differently. It is not only permissible but it will be only just
and proper to registt!r one or more articles under a class or genus if in
reality registration only in respect of such articles are intended by s11ecili· E
cally mentioning the names of' such articles and by indicating the class
under which such article or articles are to be comprised. (358-D-E]

3. If a trader or manufacturer actually trades in or 1nanufactures
only one nr so1ne of the articles coming under a broad classification and F
such tradtr or manufacturer bas no bona fide intention to trade in or
manufacture other goods or articles \\'hich also fall under the said IJroad
classification, such trader or manufacturer should not be permitted to
enjoy n1ono11oly in respect of all the articles which 1nay conie under such
broad classification and by that process preclude the other traders or G
manufacturers to get registration of separate and distinct goods which
may also he grouped under the broad classification. If registration has
hee!J. given generally in respect of all the articles coming under the broad
classification and if it is established that the trader or manufacturer \Vho
g'Jt such registration had not intended to use any other article except the
articles being used by such trader or manufacturer. the registration of f-I
332 SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.

A such trader is liable to be rectified by limiting the ambit of registration
and confining such registration to the specific article or articles which
really concern the trader or manufacturer enjoying the registration made
in his favour. (357-C-E]

4. There is no doubt that cigarettes and "quiwam" and "zarda" are
B differently used and they have their distinctive quality and separate iden-
tity. These articles are also marketed as distinct articles of use in different
manner. In the common trade channel such articles are not only held
different and distinct articles but are marketed separately.

C Edwards v. Dennis, [1885] 30 Ch. Div. 454; National Bell Co. v. Metal
Goods Co., (1971] 1 SCR 70; American Home Products Co1poration v. Mac
Laborato1ies Pvt. Ltd., (1985] Supp 3 SCR 264; Lever Brothen· Pmt Sunlight
Ltd. v. Swmiwite Products Ltd. LSVI RPC 84; Com Products Refining Co. v.
Sltargiila Food Products Ltd. AIR (1960) SC 142; Some1ville v. Sehemb1i,
(1887) 2 AC 453; Rustom v. Bata Shoe Company, AIR (1957) Cal. 120;
D Sunder v. Caltex, AIR (1969) Bombay 24 and Nestle Products v. Milkmaid
Co1poratio11, AIR (1974) Delhi 40, cited.

CIVIL APPELLATE JURISDICTION: Civil Appeal Nos. 9094-95
of 1996.

E From the Judgment and Order dated 11.10.90 of the Madras High
Court in Trade Mark Second Appeal Nos. 1 and 2 of 1981.

M.S. Ganesh, N. Durga and T.V.S.N. Chari, for the Appellant.

F C.S. Vaidyanathan, Shivaram, O.P. Gaggar, S.R. Setia for the
Respondent.

A.N. Jayaram, Additional Solicitor General, Ms. Indira Sawhney and
D.S. Mehra, for the Respondent No. 2.

G The Judgment of the Court was delivered by

G.N. RAY, J. Leave granted. Heard learned counsel for the parties.

These appeals are directed against the common judgment dated
October 11, 1990 passed by the Division Bench of Madras High Court. in
H Trade Mark Second Appeal Nos. 1 and 2 of 1981 arising out of the
VISHNUDASTRD.ASVJDHNUDAS KISH ENDAS v. VAZIR SULTAN TOBACCO CO. LTD. !G.N. RAY. J.] 333

judgment dated September 11, 1980 passed by a Single Bench of Madras A
High Court in AAO Nos. 582-83 of 1978. The respondent No. 1 Company,
namely, the Yazir Sultan Tobacco Co. Ltd., Hyderabad, has been manufac-
turing cigarettes under the brand name "Charminar". The said Company in
1942 and in 1955, under the then Trade Mark legislation obtained registra-
tion of Trade Mark in respect of n1nanufactured tobacco 11 falling in Class
B
34 of the 4th Schedule to the rules framed under the Trade Marks Act
1940 and 1950 Act. The respondent No. 1 Company, however, did not
manufacture anything other than cigarettes during all these long years. The
appellant, namely, Vishnu Das Trading as Vishnudas Kishendas Zarda are
manufacturing· quiwam and 'zarda' since 1973 and the appellant has been
using the same trade mark, namely, "Charminar" on his bottles and boxes C
of quiwam and zarda. The device of trade mark "charminar" in the city of
Hyderabad as used by the appellant is, however, different from the device
being used by the respondent No. 1 Company. The appellant applied for
registration of quiwam and zarda with trade mark "Charminar" under the
Trade and Merchandise Marks Act 1958 and the Trade Marks Rules, 1959 D
framed under the said Act. The respondent Company raised objections
that the trade mark sought by the appellant would conflict with the
registered Trade Marks Nos. 9951 and 170427 which the respondent No. 1
Company obtained in 1942 and 1955. The Joint Registrar of Trade Marks,
however, observed inter alia in the minutes dated September 24, 1973 about
the objections of the respondent to the effect that the mark would conflic, E
with registered trade marks Nos. 9951 and 170427. It was also observed
that although the applicant had contended that such registration of trade
marks was in respect of cigarettes but quiwam and zarda were goods of
different specifications and such goods would not cause any conflict with
the goods being manufactured by the respondent No. 1 Company, since the p
registration was of the trade mark made in favour of the respondent in
respect of 'manufactured tobacco' which in its ambit would also take
quiwam and zarda, the objection of the respondent No.1 Company under
Section 12(1) of the Trade Marks Acts, therefore, could not be waived. It
was noted in the minute that the counsel for the applicant i.e. the appellant
herein, had offered to apply for rectification of the said trade mark in G
favour of the respondent No. 1 Company.

Accordingly, on October· 15, 1973, the appellant filed two applica-
tions under Section 46 read with Section 56 of the Trade and Merchandise
Marks Act, 1958 before the Registrar of Trade Marks, Madras for rectify- H
334 SUPREME COURT REPORTS 11996] SUPP. 3 S.C.R.

A ing the registration of the existing trade mark held by the rcspomlcnt No.
l Company mainly on the ground of non user of the same in respect of
quiwam and zarda by the respondent No. 1 Company. The proceedings
before the Registrar of Trade Marks continued from 1973-7(, but the
respondent No. 1 Company though contested the said applications could
B not dispute or refute the allegation of the appellant that the respondent
No. 1 Company had never manufactured any other article of tobacco
except the cigarettes. The said applications made by the appellant were
ultimately disposed of by the Assistant Registrar, Trade Marks, Madras on
August 31, 1976 by allowing the applications for rectification. The Assistant
Registrar Trade Marks ordered that the Registrar, Trade Mark, bcari11g
C Nos. 9951 and 170427 would be rectified by making the entries relating to
specification of goo<ls to read as 1 cigarcttes'.

Respondent No. 1 Company thereafter preferred two statutory ap-
peals u~dcr Section 109(2) of the Trade and Merchandise Marks Act
D before a learned Single Bench of Madras High Court. By a common
judgment dated September 11., 1980, the learned Single Judge allowed the
said appeals preferred by the respondent No. l and set aside the order of
the Assistant Registrar, Trade Marks, dated August 31, 1976. The learned
Single Judge, in his order allowing the said appeals, had observed that the
Acsistant Registrar of Trade Marks had made a sub-classification of
E 'manufactured tobacco' occurring in Class 34 although sub- classification
could not be made. It was also held by the learned Single Bench of the
Madras High Court that to sustain registration for an article 'manufactured
tobacco' in Class 34, it was not necessary to establish user of the trade mark
and rectification as ordered by the Assistant Registrar would enable the
F appellant to pass them as the goods manufactured by the respondent No.
1 Company.

Against the judgment and order passed by the learned Single Bench,
the appellant preferred two statutory appeals under Section 109(5) of the
G said Trade and Merchandise Marks Act, 1958 (hereinafter referred to as
Trade Marks Act) before a Division Bench of the Madras High Court and
by the impugned common judgment dated October 11, 1990, the Di,;sion
Bench dismissed the said appeals thereby affirming the order passed by
the learned Single Bench of Madras High Court. It was, inter a/ia, held by
the Division Bench of the Madras High Court that there cou1d be no
H separate registration in respect of cigarettes as Class 34 spoke only of
V\SHNUDASTRD.ASVJDHNVDAS KISHENDAS ,.. VAZIRSVLTAN TOBACCO CO. LTD. [G.;-;. RAY.J.J 335

11
manufactured tobacco" and that ground alone \Vas sufficient for setting A
aside the order of the Assistant Registrar. The Division Bench fnrther held
that the Joint Registrar had already passed an order under Section 12 of
the Trade Marks Act, 1958 declining registration of trade marks as sought
by the appellant and in the absence of rectification of the trade marks in
the register in favour of the Respondent No. 1 Company, the said registra-
B
tion was conclusive of the matter and the rectification applications were
not maintainable. The Division Bench also held that manufacture of
. cigarettes \Vould come under cmanufactured tobacco'. Hence, the respon-
dent No. l Company's trade mark could not be removed or restricted on
the ground of non-use with reference to goods of different specifications
such as quiwam and zarda falling under the class 'manufactured tobacco' c
even if quiwam and zarda had never been manufactured or were intended
to be manufactured by the respondent No. 1 Company. As aforesaid, the
said decision of the Division Bench of Madras High Court is under
challenge in these appeals:

Mr. M.R. Ganesh, the learned counsel appearing for the appellant, D
has submitted that the avowed object of the Trade Marks Act, as stated in
the Statement of Objects and Reasons is "to enlarge the field of
registerability". Mr. Ganesh has submitted that the legislative intent and
object of the provisions in the Trade Marks Act relating to rectification
proceedings under Section 46 which deals with removal from register and E
imposition of limitations on ground of non-use read with Section 56 which
deals with the power to cancel or vary registration and to rectify the
register are :

(a) to maintain the purity and precision of the Trade Marks
Register F

(b) to secure advantage to the public

(c) to establish bonafides in the registration of Trade Marks

(d) to obviate creation of monopolistic or oligopolistic trends
G
through Trade Marks

Mr. Ganesh has further submitted that the present case relates solely
to rectification proceedings and the controversy in the present case does
not arise out of or relate to any question of infringement of trade mark or H
336 SUPREME COURT REPORTS [1996] SCPP. 3 S.C.R.

A passing off, defensive registration or any other kind or proceedings con-
templated and provided for by the Trade Marks Act and considc•ations
relevant to such proceedings are not germane to the subject matter con-
cerning the proceedings out of which the appeals arise. Mr. Ganesh has
further submitted that the quinteS>.ential admitted and concurrently found
B on facts and records are :

(i) the respondent Company is and always has been solely manufac-
turing cigarettes under the brand name of 'charminar' ever since
1942 and 1955. The said Company obtained registration of Trade
Marks for manufacturing tobacco in relation to the cigarettes
c bearing the said brand name falling under Class 34 of the 4th
Schedule of the Trade Mark Rules framed u'ldcr the Trade Marks
Act 1940. The Schedule in Trade Marks Rules 1942 continues
verbatim as the 4th Schedule of Trade Marks Rules framed under
the Trade Marks Act. The Trade Mark 'charminar' is not defensive
registration. The word 'charminar' is not an invented word which
D is the condition precedent for a defensive registration under Sec-
tion 38 of the 1940 Act corresponding to Section 4B of the
subsequent Trade Marks Act.

(ii) the respondent Company never intended to nor evinced any
intention to nor even intends to manufacture anything other than
E
cigarettes.

(iii) Class 34 reads thus
11
34 tobacco raw or manufactured, smokers articles, matches. 11
F 11
manufactured tobacco" covers a large range and variety of
goods and articles which in terms of their different descriptions as
well as different modes of consumption, may be broadly
categorised as :

(a) tobacco consumed by smoking, cigarettes, cigars cheroot,
G
bidis, pipe tobacco.

(b) tobacco consumed by chewing and ingestion quiwam
which is the paste form and applied as an ingredient to pan,
zarda which is in the form of fine flakes (usually aromatic)
H also applied to pan as another ingredient; gutka - it is agai!l
VISHNUDASTRD.ASV!DHNVDASKISHENDASv. VAZJRSULTANTOBACCOCO. LTD. [G.N. RA Y,J.] 337

in fine flakes which is chewed sometimes with the addition A
of lime (chuna).

(c) tobacco consumed by inhalation - snuff which is m
powder form and taken in or inhaled through the nose.

(iv) the word 'charminar' is distinct and specific in connota- B
tion. It is the name of a well known 18th century monument
standing as a landmark in the city of Hyderabad. Its name
and depiction in any form was not susceptible to any
proprietary on pre-emptive claim by any one.

(v) Since 1973 the appellant has been manufacturing quiwam
c
and zarda in respect of which the appellant sought trade
marks under the brand name and device of 'charminar' on
the bottle and boxes of the product of the appellant with an
entirely different depiction as compared lo that used by the
respondent Company on its cigarette packets and cartoons. D
The appellant also holds a duly registered copyright under
the Copyright Act. 1957 on the brand name and device of
'charminar' as depicted by the appellant.

(vi) When the appellant had applied for registration of the E
said trade mark under Class 34 in respect of quiwam and
zarda, the trade mark Registry declined to grant the same on
account of the respondent Company's said registered trade
mark in relation to the cigarettes for which the appellant was
constrained to get the register rectified in relation to the
respondent Company's trade.mark. Hence, the proceedings F
under Section 46 read with Section 56 of the Trade Marks
Act had to be initiated· by the appellant.

Mr. Ganesh has contended that Manufactured tobacco" is a genus of
which those consumed variously i.e. by chewing, inhaling or by smoking are G
species. Each of these species constitutes articles of different description
from the others and each is distinct in character and use, though all of them
fall within the same broad class i.e. 11 manufactured tobacco".

Mr: Ganesh has contended that no trade mark is or can be granted
in respect of a class of goods which is nebulous and lacks in any specificity H
338 SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.

A and precise identification-such as "manufactured tobacco". without any
reference lo the particular goods or articles or thing falling in the claJS
which is traded in or manufactured and in respect of which the applicant
trader or manufacturer seeks a trade mark. Hence, the registration of
Trade Mark in favour of Respondent No. 1 in 1942 and 1955 as "manufac-
B tured tobacco" was fundamentally erroneous and consequential erroneous
entry in the Trade Mark Register is liable to be appropriately rectified. By
such rectification, limiting the respondent Company's trade marks to
cigarettes, no prejudice will be caused to the respondent Company,
whereas if such rectification is not carried out, the appellant is irreparably
prejudiced and is precluded for all time from getting the trade marks for
C his goods, quiwam and zarda registered. Sush prejudice is equally oc-
casioned to the rest of the trading and manufacturing community in rela-
tion to any species of "manufactured tobacco 11 other than cigarettes. Mr.
Ganesh has subn1itted that such prejudice, pre-en1ption and exclusion in
rem can not be permitted by a trade 1nark registration.

D
Mr. Ganesh has also submitted that on a true interpretation and
proper construction of Trade Marks Act and Trade Marks Rules 1959,
where (as in this case) a trader or manufacturer actually trades in or
manufactures solely one article namely cigarettes and evinces no bonafide
intention \Vhatever to trade in or manufacture any other goods or articles
1
E belonging to the genus manufactured tobacco' such trader or n1anufac-
11
,

turer cannot by obtaining a trade mark for its product in respect of the
Class in which it falls (in this case "manufactured tobacco") preclude the
public at large or in any event, the trading and manufacturing community
e.g. traders and manufacturers of quiwam and zarda or traders and
F manufacturers of snuff etc. from obtaining any mark in respect of their
products ~imply because they fall under a broad class or a genus i.e.
11
manufactured tobacco" although the goods belong to different species and
are essentially different in description as also in the rnode of consun1ption.

Mr. Ganesh has further submitted Lhal exclusion of different species
G \vhich may come under the heading of a genus comprising various specifics
even \Vhen a trader or n1anufacturer having obtained registration under the
heading of genus, in fact, is manufacturing only one of the species thereby
pre-empting or excluding others Lo get registration in respect of different
species other than the species which is being manufactured by the trader
H or manufacturer, will be unjust and unfair and against the principles by
V1SH:-..'UDAS1RD.AS VIDH'<UDAS KISHENDASv. VAZ\RSlJLTA'ITOR<\CCOCO. l TD. [G.N. RAY. .l.] 339

which registration of trade mark is made. This proposition whould he A
particularly valid where (a) the registration of the registered trade mark is
not a defensive registration and the brand name of the goods under
registration is not an 11 invented \Vord 11 and the device) logo or syrnbol
associated with that name and depicting the product is not an invented one
and (b) even though the registered trade mark holder obtained the registra-
B
tion for the entire class in which his product falls, but he has neither any
bonafide intention to use nor has made any bonajide use or the registered
trade mark in relation to any other goods falling within that class, whether
within the stipulated statutory periods or beyond them, governing rectifica-
tion of the Register and imposition of limitations on the ground of non-use
concerning registered trade marks. c
Mr. Ganesh has further submitted that a contrary approach to the
interpretation and construction of the Trade Marks Act and the rules
framed thereunder will go against the very object and spirit or and prin-
t:iples underlying the trade 1nark Lnv. Accorc.ling to Mr. Ciancsh, the D
aforesaid propositions and the principles they adumbrate apply a fortiori
to a case such as the present one. Mr. Ganesh has contcndec.l that a
registered trade mark holder cannot, in la\V, claim exclusive 1nonopoly
rights over its trade mark as extenc.ling to goods of all descriptions falling
within the same class in which its sole and solitary product falls. The
registration in favour of the respondent Company cannot be held to E
interpose or sustain objection to the rectification of its registered trade
mark or imposition of limitations thereon with reference to the goods or
articles of entirely different description, character and mode of consump-
tion iQ. relation to \Vhich it had, at the time of obtaining the registration, no
bonafide intention to use its trade mark and which goods and artic1csi it F
has never n1anufactured or intends to manufacture in fact. Mr. Ganesh has
contended that the registration of trade mark can appertain only to specific
goods and not to a generic class. Referring to Sections 46 and 56 of the
Trade Marks Act, Mr. Ganesh has submitted that the statute contains the
following postulates:
G
(i) The existing trade mark was registered without any bonafide
intention on the part of the applicant that it should be used in relation lo
those goods by him and there has in fact been no bonafide use of the trade
mark in relation to those goods by him upto a date one n1onth before the
date of the application under Section 46 by the person aggrieved. Mr. H
340 SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.

A Ganesh has submitted that this requirement is fully satisfied in the present
case.

(ii) Upto a date one month before the date of the application by the
person aggrieved, a continuous period of five years or longer had elapsed
during which the trade mark was registered and during which there was no
B bonafide use thereof iri relation to those goods by the registered trade mark
holder. In such a case, the concerned Tribunal, (High Court or the
Registrar), may irnpose on the registration of the existing trade mark such
limitations as it thinks proper for securing that the· existing registration shall
cease lo extend to such use. Mr. Ganesh has submitted that his requirement
C is also fully satisfied and the Assistant Registrar of trade marks has
specifically ordered so.

In this connection, Mr. Ganesh has submitted that the statutory
burden lies on the registered trade mark holder to show that his said
D non-use was due to special circumstances in the trade and not to any
intention to abandon or not to use the trade mark in relation to the goods
to which the application of the aggrieved person relates. It has been
contended by Mr. Ganesh that the respondent Company has not pleaded
that under any special circumstance the Company did not use other items
of the goods falling under the class in which the respondent Company got
E registration. The respondent Company has not discharged the burden
arising from non-use of different items coming under the broad classifica-
tion 'manufactured tobacco'. Mr. Ganesh has also submitted that if either
of the aboye mentioned ingredients is satisfied, then allowing of an applica-
tion by the person aggrieved for the rectification will be matter of course
F and refusal of such application for any valid reason will be an exception.
Mr. Ganesh has submitted that when the concerned authorities satisfy that
rectification of the registered trade mark is warranted in the facts and
circumstances of the case, such authority may make such order for making,
expunging or varying entries in the register as it may think fit for one or
more of the following reasons:
G
(a) the entry made in the Register without sufficient cause

(b) the absence or omission from the Register of any entry

H (c) any error or defect in an entry in the Register
VlSHNUDASTRD. ASVIDHNUDA'i KISHENDAS v. VAZIR SULTAN TOBACCO CO. L'fo. [G.N. RAY. J.) 341

It has also been contended by Mr. Ganesh that it is consistent with A
the scheme and provisions of the Trade Marks Act and the rules framed
thereunder that no registration of trade mark is absolute, perpetual and
invariable. Thus, under Section 12 which deals with prohibition of registra-
tion of identical or deceptively similar trade marks, in case of honest
concurrent use or of other special circumstances which in the opinion of
B
the Registrar make it proper so to do, he may permit the registration by
more than one proprietor of trade marks which are identical or nearly
resemble each other whether or not any such trade mark is already
registered in respect of the same goods or description of goods subject to
such conditions and limitations as the Registrar may think fit to impose.
Mr. Ganesh has submitted that this statutory scheme pervades other c
provisions of the Act as well including in particular those that relate to the
institution of applications/proceedings for any purposes governed by the
Act. In this connection, Mr. Ganesh has drawn attention of the Court to
Sections 16, 17, 18, 21, 46, 47, 56, 69 and 112 of the Trade Marks Act.
D
Mr. Ganesh has also submitted that intrinsic evidence in the Trade
Marks Act and the 1959 rules leads inexorably and ineluctably lo the
following conclusions :

(a) Trade mark means a mark used in relation to the goods for
the purpose of indicating or so as to indicate a connection in the E
course of trade between the goods and some persons having the
right to use the mark. "Goods" means anything which is the subject
of trade or manufacture. A trade mark posits an integral connec-
tion between a specific article or thing forming the subject matter
of trade/manufacture and its attribute as that of a particular F
trader/manufacturer. Obviously, anything which is the subject of
trade or manufacture, n1ust be an article or thing that is distinctly
con1plete, identifiable and vendible but not something nebulous
and lacking in specificity or precise lacking in specificity or precise
identification. In this connection, the attention of this Court is
drawn by Mr. Ganesh to the definition of "Goods" and the defini- G
tion of "Trade Mark" in Sections 2(1)(g) and (v).

(b) the focus of trade marks and registration thereof is on concrete,
specific, identifiable and vendible goods and not on a concept or
appellation of a class or a genus of goods. In this connection, the H
342 SUPREME COURT REPORTS fl996j SUPP. 3 S.C.R.

A Court's attention was drawn by Mr. Ganesh to the dcfinitiom
relating to certification trade rr1ark, false trade descriplion 'tra<le
1
'
1 1
',

marks" appearing in Section 2, sub-section (l) Clauses (c), (J), (g),
(i), (m), (u) & (v) and Section 2, sub-section (2) Clause (b).

B Mr. Ganesh has contended that a trade mark can appertain only to
specific goods and not lo a generic class. No trade mark is or can be
1
granted in respect of a class of goods, such as 'n1anufacture<l tobacco"
without any reference to particular goods or articles or thing falling in that
class which is traded in or manufactured and in respect of which the
applicant trader or manufacturer seeks the trade mark. Mr. Ganesh has
C contended that the classification goods and names of the classes as sci out
in the fourth Schcdole to the 1959 Rules framed under the Trade Marks
Act under Section 133 read with Section 22 of the General Clause Act,
1897 is purely for the purposes of enabling the Trade Marks Registry lo
ascertain in \Vhich class, specified goods or a particular article or thing falls
D before granting and registering any trade mark in respect thereof.

Mr. Ganesh has further submitted that Section 112 of the Trade
Marks Act gives express recognition and weight lo the practice of the
Trade Marks Registry. According to Mr. Ganesh, appreciable significance
and interpretative value are attached lo the index maintained and used hy
E time honoured practice by the Trade Marks Registry. The index is an
amplification in alphabetical order of the classification of goods, names of
the classes set out in the fourth schedule of the 1959 Rules framed under
the Trade Marks Act. The said Index is based on and derived from "The
International Classification Goods and :Services to which Trade marks Act
F Applied," published by the World Intellectual Property Organisation
(W!PO) which was established by Coll'.ention at Stockholm on July 14,
1967. Mr. Ganesh has stated that India is a member country of that
()rganisation and a signatory to that convention. The amplification and
refinement of a statutory classification for practical utility and efficacy
based on an internationally accepted and time honoured classification and
G practice deserves to be given due \Veight especially \vhen such practice is
1

given express statutory recognition and sanctity even to the extent of
mandatorily constituting evidence in the proceeding.

Mr. Ganesh has also submitted that the Trade Marks Act maintains
H a clear distinction between goods of the same description (occurring in
VISHNUDASTRD. AS V!DH!\VDAS l'JSHENDAS c·. VAZIR SULTA.1\'TOBACCO CO. LTD. IG.N. RAY, J.] 343

Section 46 with grammatical variations in Sections 12 and 34) and "class of A
goods" with its grammatical variations in Section 18 and Rules 22 and 26
read with the fourth Schedule to the 1959 Rules. A given class occuring in
the said Schedule may comprise a number of goods or articles or things
each of which is separately identical and vendible and all of which are nol
goods of the same description as contradistinguished from goods falling
B
within the same class. Manufactured tobacco is a class which covers widely
varying goods of different description, character and mode of consumption.
Mr. Ganesh has contended that Section 2 (J)(m) of the Trade Marks Act
defines 'permitted use' in relation to a registered trade 1nark to mean inter
alia 1.he use of a trade n1ark by a registered user thereof nin relation to
goods with which the user is connected in the course of trade". Similarly, C
a n1ark i.e. a device, ~Jran<l, heading, label, ticket, nan1c, signature \Vord,
letter or nu1neral or any con1bination thereof can be placed or used upon
specific goods only and not upon something that is a concept or appella-
tion, for example, 'n1anufacturcd tobacco'. !\.1r. Ganesh has submitted that
Section 2(2) (b) of the Trade Marks Act provides that in the Trade Marks D
Act any reference to the use of a mark in relation lo goods shall be
construed as a reference to use of the n1ark upon or in any physical or in
any other relation whatsoever to such goods.

Referring to Section 8 of the Trade Marks Act, Mr. Ganesh has
submitted that Section 8 contemplates that registration can only be in E
11 11
respect of particular goods and that there is a distinction between goods
and "a prescribed class of goods" in which they may be comprised. It also
postulates that the attribution of particular goods to their proper class for
purposes of registration of trade mark is to be determined by the Registrar
whose decision in the matter shall be final. Mr. Ganesh has also submitted
F
that Section 9 of the Trade Marks Act deals with requisites for registra-
tion in the Trade Marks Register. Sub- section ( 4) highlights the point that
if it is not distinctive, a trade mark shall not be registered in Part B of the
Register unless such trade mark 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, G
generally.

- Mr. Ganesh has submitted that Section 12(3) of the Trade Marks Act
prov.ides that in case of honest concurrent use or of other special cir-
cumstances which in the opinion of the Registrar, 1nake it proper so to do, H
-·
344 SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.

A the Registrar of trade marks which are identical or nearly resemble each
other in respect of the same goods or description of goods subject to such
condillons and limitations, if any, as the Registrar may think fit to impose.
Section 45 (2) also provides that the High Court or the Registrar may
impose on the registration of an existing trade mark such limitations as
the Tribunal thinks proper for securing that registration shall cease to
B c"tcnd to use of the registered trade mark to the extent of its actual
non-use.

Mr. Ganesh has submitted that at the very stage of application for
registration of a trade mark, the Trade Marks Act recognises the distinc-
C tion between specific goods and the class of goods in which they may fall.
Section 18(2) provides that an application for registration "shall not be
made in respect of goods comprised in more than one prescribed class of
goods." Similarly, Section 24 which deals with jointly owned trade marks
adverts to an article with which both or all of them are connected in the
D course of trade.

Mr. Ganesh has further submitted that e"trinsic aids to the inter-
pretation and construction of the Trade Marks Act and the 1959 Rules
framed thereunder also serve to sustain the submissions made by him. The
extrinsic aid includes corresponding legislation in the United Kingdom, the
E legislative history of the Trade Marks Act of 1958 and 1959 Rules framed
thereunder, the Report of the Trade Marks Enquiry Committee, 1954, the
Report of Mr. Justice Rajagopala Ayyangar on Trade Marks Law Re\1sion
in 1955 and the Statement of Objects and Reasons for the Bill which
culminate in the Trade Marks Act. Mr. Ganesh has submitted that the
F decisions of Courts in India and also the authorities of persuasive value
from foreign jurisdiction support the contentions made by him. Mr. Ganesh
has submitted that the rationale of trade mark law with reference to the
rectification of the Registrar is aptly and succinctly articulated in a locus
classicus in Edwards v. Dennis, (1885) 30 Ch. Div. 454 at 474. Lord Justice
Cotton (Lindley and Fry, L.J.J. concurring) has observed to the following
G effect:

".......... The registration in the present case has been for the entirety
of that class. In my opinion that is wrong. Even if a trade mark
can be registered which is not in actual use, it ought to be restricted
H to those goods in connection with which it is going to be used. In
VJS!-INUDASTRD.ASV!DHNUDA<; KISHENDAS,·. VAZIRSULTA1'\l 1DBACCOCO. LTD.fG.N. RAY.l] 345

1ny opinion, it is not the intention of the Act that a n1an registering A
a trade mark for the entire class and yet only using it for one article
in that ch'5, can claim for himself the exclusive right to use it for
every article in the class ....... Can a man claim registration for all
the articles specified in the class when the business he is engaged
in, comprises only one specific portion of the articles named in the
B
class? I am of the opinion he cannot ....... Consequently, I am of
the opinion that the Register ought to be rectified ......... .

••••••••••••••••• In n1y opinion, if a man wishes to extend his business
11

to a new description of goods and to use his trade mark in
connection with the goods, he ought to register it in respect of C
those goods. All we have now to do is to construe this Act of
Parliament; and it appears to me that it would be a wrong inter-
pretation of the Act, to hold that, when registration is general for
an entire class, it can be maintained for that class by a man who
is assignee of a business in only one particular description of goods D
in that class".

Mr. Ganesh has submitted that both the learned Single Judge and
the Division Bench of the Madras High Court in the impugned Judgment
erred in interfering in appeal with the properly exercised discretion of the
Registrar to limit the respondent Company's registered trade mark to .E
cigarettes and to rectify the Register accordingly. Jn this connection, Mr.
Ganesh has referred to the decision of this Court in National Bell Co. v.
Metal Goods Co., [1971] 1 SCR 70 at page 86 E- F). This Court has
observed that under Section 56, the power to rectify is undoubtedly discre-
tionary. Where such discretion has been properly exercised, a Court of F
Appeal .would refuse to interfere. Mr. Ganesh has also referred to the
decision in A1ne1ican Hanle Products Corporation v. Mac Laborato1ies Pvt.
Ltd., [1985] Supp. (3) SCR 264). It has been held by this Court in the said
decision that :

"From what we have said above, we must not be understood to G

-. ;
mean that a person who does not intend to use a trade mark
himself, can get it registered and when faced with an application
under Clause (a) of Section 46(1) to have that trade mark removed
turn round and say that he intended to use it through some person
who was proposed to be registered as registered user. This would H
346 SUPRl!MECOURT REPOll'fS (1996] SUPP. 3 S.C.R.

A clearly amount to trafficking in a trade mark."

Mr. Ganesh has submitted that the registration in 1945 and 1953
made in favour of the respondent company under the broad classification
"manufactured tobacco" although the Respondent Company is admittedly
only manufacturing cigarettes and does not intend to manufacture any
B other goods and articles falling under the genus 'manufactured tobacco;
has created a monopoly of trade mark over varieties of goods coming under
the said broad classification thereby preventing the other traders and
manufacturers like the appellant to get their distinctive articles which also
fall under the general classification 'manufactured tobacco' to get
C registered in respect of such distinctive articles. In such circumstances, the
rectification allowed by the Assistant Registrar was only just and proper
and no interference was called for by the High Court against such order
of rectification. Mr. Ganesh, therefore, submits that the appeal should be
allowed by setting aside the impugned decision of the High Court and by
D restoring the order of rectification passed by the Assistant Registrar of
Trade Marks in favour of the appellant.

Mr. C.S. Vaidyanathan, learned counsel appearing for the respon-
dent No. 1, however, disputes the contentions made by Mr. Ganesh. Mr.
Vaidyanathan has submitted that the question involved in these appeals are
E not confined only to the ambit of Sections 46 and 56 of the Trade Marks
Act and Rules 94 to 97 of the Rules framed thereunder. According to Mr.
Vaidyanathan in the proceedings concerning the appeals, question of infr-
ingement of trade mark by the appellant is also involved. He has submitted
that the appellant has been using trade mark-'charminar' since 1973,
F despite being aware of the respondent Company's objection to the use of
such trade mark, as amounting to infringement of the trade mark of the
respondent Company. The Madras High Court has categorically held that
the respondent Company got registration in Class 34 and such registration
is for manufactured tobacco. The Respondent Company, therefore, has
exclusive right to use the trade mark 'charminar' for all goods falling under
G 'manufactured tobacco'. As the Assistant Registrar of trade Marks had
erroneously restricted the respondent Company's registration only to
cigarettes, both this Single Bench and Division Bench the Madras High
Court have rightly set aside such erroneous order.

H Mr. Vaidyanathan has also submitted that the respondent Company
VJSl-l;\UDASTRD.ASV!DHNUDt\S K!SHE1"DAS1·. VAZJR SUlfANTOBACCOCO. LT[). {G.N.RA Y. .1.] 347

had not filed the appedl before the Ma<lrccs High Court solely for the A
purpose of deciding the questions of law and procedure regarding the
power of the Registrar of Trade Marks to split classes in terms of Sections
4G and 56. The respondent Company preferred the appeals before the High
Court to restore registration n1ade in its favour and to ensure removal of
the restrictions which had been improperly and unjustly imposed by the
B
Assistant Registrar of Trade I\1ark by confining the registration only in
respect of cigarettes

Mr. Vaidyanathan has also submitted that the Madras High Court
has rightly indicated that a conjoint reading of Section 6(1) and Rules 22
to 26 framed under the Trade Marks Act together with schedule 4, support C
the contention of the respondenl: (~on1pany that apart fro1n classification
made in Schedule 4, no other classification is possible for the purpose of
registration of trade mark. Mr. Vaidyanathan has "rbmitted that there is
no separate or independent item in the classification contained in the 4th
Schedule for cigarettes. Cigarettes can only be brought under the entry
'manufactured tobacco' under Clause 34 of Schedule 4. Mr. Vaidyanathan D
has submitted that in view of such legal position, the High Court has rightly
held that the order of Registrar was liable to be set aside on that ground
only.

Mr. Vaidyanathan has also submitted that Section 8 of the Trade E
Marks Act is different from Section 5 of the previous Trade Marks Act of
1940. The legal incidence of the expression in Section 8 of the present Act,
"comprised in prescribed class of goods" which does not find place in
Section 5 of the previous Act of 1940 requires proper consideration. Mr.
Vaidyanathan has submitted that legislative change by the aforesaid expres-
sion introduced in the present Act has been consciously made by the F
legislature for a purpose. Mr. Vaidyanathan has submitted that the State-
ment of Object and Reasons as contained in the Trade Marks Act, 1958
clearly indicates that the new Act was introduced to enlarge the field of
registrability and to avoid the difficulties which were being exercised by the
Indian merchants in securing registration of trade marks in foreign G
countries where the production of certificate of home registration was a
condition precedent for obtaining foreign registration. Mr. Vaidyanatha
has submitted that the present Trade Marks Act was enacted not only to
prevent confusion and deception but also to provide affective protection
to trade marks. To buttress this argument, Mr. Vaidyanathan has also
drawn the attention of the Court to the debates in the floor of the H
348 SUPREME COURT REPORTS (1996] SUPP. 3 S.C.R.

A Parliament (Lok Sabha) when the Bill to amend the Trade and Merchan-
dise Marks Act, 1940 was introduced.

Mr. Vaidyanathan has further submitted that a reference to Trade
Marks Act 1940, and similar Sections of the English Trade Marks Act of
1938, 1905 and 1875 will show that under the 1940 Act also under the said
B English Trade Mark Acts, it could be registered only ;n respect of par-
ticular goods or classes of goods. The omission of the expression "particular
goods" and inclusion of "prescribed class of goods" in the 1958 Trade Marks
Act is significant and such change has bearing on the true construction of
Section 6 of the Trade Marks Act, Mr. Vaidyanathan has submitted that
C under the present Trade Marks Act, registration can be only in the
nomenclature, phraseology and terminology used in the classification,
prescribed under the rules.

Mr. Vaidyanathan has also submitted that the decision of the English
Court in Edwards v. Dennis, (supra) is not applicable for consi<lfring the
D effect registration of trade mark in respect of specified class of goods under
the present Act in view of the express language used in Section 8 of the
present Act, the Madras High Court has also indicated the import of such.
expression in Section 8 of the Trade Marks Act.

E Mr. Vaidyanathan has referred to another decision of English Court
in Lever Brothers, P01t Sunlight, Ld. v. Sunniwite Products Ltd., (LXVI RPC
84). In the said decision, the plaintiffs were proprietors of the mark
"sunlight" registered in 1884 in Class 3 in respect of soap, substances for
laundry use, detergents, and certain cosmetic goods. At the beginning of
1946, the defendants commenced to use the mark "sunniwite" on a soapless
F detergent powder. The plaintiffs sued for infringement and the defendants
counter claimed to rectify the Register by striking out goods other than
soap, on the ground of non-user. The plaintiff's mark had been used on a
large scale but on soap only. It has been in the said decision that :

(a) the mark had been infringed, (b) the specification of goods
G ought not to be amended to exclude detergents or substances for
laundry use, (c) the cosmetic goods within the specification were
not of the same description as soap and that subject to the general
discretion of the Court, they might be liable to exclusion but that
- (d) the defendants were not persons aggrieved by the registration
H in respect of those goods and were not therefore entitled to clain1
VISHNUDAS1RD. AS VIDHNUDAS KISH ENDAS~·. VAZIR SULTAi'\! TOBACCO CO. LTD. [G.K RAY. J.] 349

their exclusion from the plaintiffs registration. A

Mr. Vaidyanathan has further submitted that the Madras High Court
has rightly held with reference to section 46 of the Trade Marks Act, in
part;cular the proviso to the said section that it was quite apparent that the
applications for rectification were not maintainable. The concerned
B
authorities had already come to a finding that cigarettes, Quiwam and
zarda - all would come under the same description of goods, namely,
'manufactured tobacco'. Accordingly, the cigarettes having already been
., registered under the head of 'manufactured tobacco' at the instance of the
respondent Company, the rectification applications for restricting the said
trade mark only for cigarettes were not maintainable so as to enable the c
appellant to register that same trade mark for manufacture of quiwam and
zarda even though the said articles fall under the same description of
goods. Mr. Vaidyanathan has also submitted that the respondent company
alone is entitled to use "charminar" trade mark with respect to the
'manufactured tobacco' products in Class 34. Therefore, there was no D
question of proving that the respondent Company had utilised or had
intended to utilise its trade mark for quiwam and zarda.

Mr. Vaidyanathan has also contended that the trade mark "char-
minar" had been registered in favour of the respondent Company under E
the general heading 'manufactured tobacco' referred to in Class 34 of the
4th Schedule. Accordingly, the respondent Company, namely, the
registered proprietor cannot. be compelled to produce or trade in all the
goods falling under that category on the pain of losing his trade mark for
non-use. So long, a separate classification has not been made in respect of
F
different classes of goods falling under the general heading 'manufactured
tobacco', the registration of the respondent Company's trade mark in
respect of 'manufactured tobacco' cannot be held to be bad or invalid. Mr.
Vaidyanathan has also submitted that the appellant has been manufactur-
ing quiwam and zarda only after it had filed application for registration
which was initially objected by the Registrar, It is, therefore, quite evident G
that on the date of making the application for registration by the appellant,
the mark was only proposed to be used by the appellant went ahead and
started using the marks in relation to quiwam even though the respondent
Company had objected to such use as being an infringement of its
registered trade mark in Class 34. H
350 SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.

A According to Mr. Vaidyanathan, the respondent Company by virtue
of its extensive use and prior registration since l942, is entitled to use the
said trade n1ark 'charminar' in rc1ation to the tobacco manufactured
products and such right cannot be restricted only to cigarettes which is
only one of the articles under the said heading 'manufactured tobacco'. Mr.
Vaidyanathan had disputed the contention of Mr. Ganesh that cigarettes,
B 1 11
quhvam und zar<lJ are neither 'thc san1e goods nor "the san1c description
of goods". Mr. Vaidyanathan has submitted that the Madras High Court
has rightly observed that all the goods are of the same description, namely,
)-
manufactured tobacco'. Mr. Vaidyanathan has also submitted that common
trade channels through which the product of a trader or manufacturer is
C marketed is an important consideration in deciding whether the goods are
of the same or different description. Mr. Vaidyanathan has further sub-
mitted that it is not denied by the appellant that cigarettes, quiwam and
zarda are all marketed through the same trade channel.

D In support of such contention, Mr. Vaidyanatha has referred to a
decision of this Court in Com Products Refining CQ. v. Shmpi/a Food
Products Ltd., AIR (1960) SC 142. ll has been observed in the said decision
that :

"an average purchaser would, therefore, be likely to think that
E the respondent's 'Gluvita biscuits' were made with the appellant's
'Glucovita' glucose. This was the kind of trade connection between
different goods which in the "Black Magic" case (In re: an applica-
tion by Edward Hact) 1940-58 RPC 91 was taken into considera-
tion in arriving at the conclusion that there was a likelihood of
confusion or deception. The goods in this case were chocolates
F and laxatives and it was proved that laxatives were often made with
chocolate coatings ....... ''

Similarly, in the case reported in AIR (1983) Punjab and Haryana
418, the High Court of Punjab and Haryana has held that the goods are
G being marketed through the common trade channel by observing that :
11
.......... the respondents have never manufactured watches or
clocks but they have been manufacturing clock-work-timers used
in photography ancj the radio clocks. The watches and clocks are
being sold on the same counter along with radio, transistor and
H other electrical appliances even by the defendants ....... "
VISHNUDASTRD. ASVIDHNUDAS KJSHENDAS ,.. VAZIR SULTAN TOBACCO CO. LTD. [G.N. RA Y,J.J 35]

Mr. Vaidyanathan has submitted that similar view has also been taken by A
the Delhi High Court in the case reported in AIR 1986 Delhi 329. It has
been observed in the said decision that :

"......... there is little doubt that the trade mark Goodmans has
been used by the plaintiffs from long, for their medicines. They B
being the prior user, have the right to seek its protection. The
defendant manufactured disinfectants under the same mark i.e.
'Goodmans', considering the nature of the goods manufactured by
the parties, the trade channels through which they are marketed
and the file of activity that they have, they can be termed as cognate
goods. The likelihood of deception or confusion that the goods of C
the defendant arc as well being manufactured by the plaintiffs,
cannot be ruled out. 11

Mr. Vaidyanathan has also submitted that the Bombay High Court
has also taken a similar view bi noting that the goods though of different D
descriptions, were being marketed through a common trade channel. In a
decision in the case reported in 1988 PTC 133, the Bombay High Court
has held that the registered trade mark Proprietor of Bajaj in respect of
electrical goods and appliances falling in Class 7, 8 and 11 can prevent the
use of the mark 'Bajaj' which falls in Class 21 in respect of domestic utensils
on the ground of common trade channel. E

Mr. Vaidyanathan has further submitted that when there is registra-
tion of trade mark for manufactured tobacco' in Class 34 but its use is
confined to cigarettes, another manufacturer of smoking tobacco, cigars,
snuff, or chewing tobacco or any form of manufactured tobacco which are F
all made of tobacco, cannot use the registered trade mark so as to create
confusion or deception in the mind of the purchaser that the goods sold
under the trade mark had been ·produced by the cigarette manufacturer.
In support of this contention, Mr. Vaidyanathan has referred to a decision
of the Privy Council Some1ville v. Sehembri, (1887) 2 AC 453. He has
submitted that the view taken in the said decision was allowed in the G
. decision of various High Courts, namely Calcutta High Court in Rustom
Ali v. Bata Shoe Company, AIR (1957) Cal,. 120; Bombay High Court in
Sunder v. Caltex, AIR (1969) Bombay 24, Delhi High Court in Nestle
Pmducts v. Milkmaid Corporation, AIR (1974) Delhi 40. Mr. Vaidyanathan
has submitted that the learned Single Judge of the Madras High Court has H
352 SUPREME COURT REPORTS (1996j SUPP. 3 S.C.R.

A referred to the decisions mentioned above and has rightly held that having
obtained registration in respect of the tobacco products under the heading
'manufactured tobacco' in Class 34, the respondent Company is entitled to
prevent any other trader or manufacturer to claim registration of the same
trade mark in respect of his products which also is 'manufactured tobacco'.

B Mr. Vaidyanathan has also submitted that the proviso to Section
46(1) of the Trade Marks Act imports into the proceedings for rectification
"the concept of goods of the same description" prohibited for registration
under Section 12(1). In this connection, Mr. Vaidyanathan has referred to
the decision of the English Court reported in (26 RPC 428). Buckley L.J.
C has held that the alternative of the expression "classes of goods" which
occurred in the U.K. Act of 1883 was made designedly. It was observed by
Buckley, L.J. that :

"The purpose of it was this : that where the goods are not of
the same class, but are of the same description, taking as an
D
instance, goods made of India-Rubber, then the intention of the
Act of 1883 and that of 1905 is that there shall be a veto in respect
of regist~ring an identical trade mark, or a similar trade mark in
respect of goods falling within the description, as distinguished
from the class. Section 19 is perfectly capable of being read, as is,
E I think, to be read, as if it ran thus : no trade mark shall be
registered in respect of any class of goods falling within a particular
description of goods, when an identical or similar mark is already
on the Register in respect of any goods falling within that descrip-
tion. It is true that a man cannot register for a description of goods,
F but he can register for a class of goods which fall within a particular
description, and that is, I think, what Section 19 was aimed at''.

Mr. Vaidyanathan has submitted that appellant failed in the attempts
of getting its products registered under Section 12(1) of the Trade Marks
Act as the respondent Company had already got an earlier registration of
G the same trade mark in respect of the class of goods namely, 'manufactured
tobacco'. The applications to rectify trade mark in respect of the goods of
the appellant is sought under Sections 46 and 56 of the Trade Marks Act
by the method of applying for rectification of the entry in the Register in
favour of the respondent Company. Mr. Vaidyanathan has submitted that
H such applications for the reasons already indicated are not maintainable.
VISHNUDASTRD.ASVlDHNUDAS KISHENDAS •·. VAZIR SULTAN TD BACCO CO. L1D. [G.N.RA Y,J.J 353

Accordingly, no interference is called for in these appeals and the same A
should be dismissed.

Mr. .Tayaram, the learned Additional Solicitor General appearing for
the respondent No. 2, namely, the Assistant Registrar of Trade Marks, has
submitted that Section 8 of the Trade Marks Act provides for registration B
in respect of any or many or all items within a class. He has submitted that
within a class there may be various goods. Mr. Jayaram has drawn the
attention of the Court to sub-rule (2) of Rule 26 of the Trade Mark Rules.
He has submitted that Rule 26 envisages that an application for registration
would be in respect of only one class of goods as mentioned in 4th
Schedule. If a manufacturer or trader intends to get registration of a c
number of goods which appertain to different classes as mentioned in
Schedule 4, separate applications are to be made relating to goods coming
under each of the separate classes. Sub-rule (2) of Rule 26 indicates that
in the case of application for registration in respect of the goods included
in a class or of a large variety of goods in a class, the Registrar may refuse D
to accept an application unless he is satisfied that the specification justified
by the use of the mark which the applicant has made or intends to make
if and when it is registered. Mr. Jayaram has submitted that sub-Rule (2)
of Rule 26 clearly indicates that a registration may be refused in respect
of varieties of goods which may be comprised in a class. 'Manufactured
tobacco' is a broad classification. If a trader or manufacturer gets registra- E
tion of a trade mark in respect of such a broad classification namely
manufactured tobacco, then such trader may claim exclusive right of the
use of the trade mark in respect of all the items falling under manufactured
tobacco', Mr. .layaram has submitted that for the aforesaid reason, initially
when appellant made an application for registration of quiwam and zarda F
with the same brand name 11 charminar 11, such application for registration
made by the appellant could not be accepted by indicating that registration
given to the Respondent Company covered various items under the genus.
But when the appellant made an application for rectification of the entries
in the register, such entries have been rectified by limiting the registration G
to specific product coming under the said broad classification 'manufac-
tured tobacco', namely, cigarettes by indicating reasons as to why such
rectification would be justified. Mr. Jayaram has submitted that for the
purpose of entertaining the application for registration and allotting the
appropriate slot to the article intended to be registered, index of various
articles has been made. Such index serves as an important guideline to H
354 SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.

A indicate to which class the article to be registered is to be classified.
Various goods alphabetically classified in the index ensures rationality of
approach in registering and removes arbitrariness. Mr. Jayaram has, in this
connection, referred to a compilation by Stephen P. Ladas "Patents Trade
Marks and Related Rights - National and International Protection" - Vol.
II published by the Harvard University Press. Mr. Jayaram has submitted
B
that cigarettes being a specific and identifiable article is dealt separately in
the trade channel and cigarette is specifically mentioned as a distinct
commodity of use in the index in 1975. He has also submitted that from
tobacco various articles can be manufactured but such articles are used
C differently and have separate identifications and are separately vendible
e.g. cigarette, snufl; quiwam and zarda. All the said articles have been
manufactured from tobacco but each of the articles is distinctly different
and is differently used. Initially, when the respondent Company got
registration of the trade mark "charminar 11 not in respect of any specific
article under the genus, 'manufactured tobacco', the Company by virtue of
D registration in a wide form enjoyed the right of the use of trade mark in
respect of various goods coming under the said broad heading 'manufac-
tured tobacco'. It has however been demonstrated that ever since 1942-43,
the respondent Company had manufactured only cigarettes and had not
intended to manufacture or trade in other distinct articles coming under
E the broad heading 'manufactured tobacco'. Mr. Jayaram has submitted that
there is no question of passing off quiwam or zarda for cigarette being
manufactured by the respondent Company even if the same brand name
"charminar" is given to quiwam and zarda produced by the appellant.
Referring to Section 8 of the Trade Marks Act, Mr. J ayaram has submitted
that it is permissible to register any of the goods which may fall under a
F prescribed class of goods. Hence, only cigarettes may be registered under
the broad classification 'manufactured tobacco' by specifically indicating
thal lhe registration relates to cigarettes only falling under the broad
classification. Mr. Jayaram has submitted that as registration in respect of
one or some of the articles under the broad classification is permissible,
G there cannot be any difficulty in limiting the registration earlier given to
lhe respondent Company in respect of a broad genus namely, 'manufac-
tured tobacco' to one of the species under the said genus, namely, cigaret-
tes. Mr. Jayaram has submitted that for the purpose of registration of trade
mark, apart from the classification as specified in the Schedule 4, no new
H classification can be made. But a particular goods falling under a classifica-
VlSJiNUOASTRD.ASVID!iNUDAS KISHENDAS v. VAZ1RSULTAN TOBACCO CO. LTD. [G.N. RAY, J.] 355

tion in the schedule may be registered by indicating the broad classification A
to which the articles in question falls. Such registration will not militate
against the provisions of Section 8 of the Trade Marks Act.

Mr. Jayaram has submitted that the Respondent Company is certain-
ly entitled to all the protection under the trade Marks Act in respect of
B
the articles dealt .or intended to be dealt by the Company namely cigarettes.
It has used its trade mark "Charminar" in respect of the goods manufac-
tured by it, namely, cigarettes and the Company it also entitled to prevent
any other trader or manufacturer to use the brand name in respect of the
said article i.e. cigarette. But it will be not proper to allow him to enjoy
monopoly over large varieties of goods which are distinct in their use and c
which are clearly identifiable as separate products and also separately
vendible and marketed. Even when the respondent Company is concerned
on\y in one of such products, namely, cigarettes if the rectification of trade
mark is not made thereby permitting the other manufactures and traders
to deal with other distinct products made of tobacco, the Respondent D
Company will be given an unmerited privilege of enjoying monopoly over
all goods coming under a broad class 'manufactured tobacco'. Such posi-
tion is unjust and inequitable and also not consistent with the Trade marks
Act and the Rules. Mr. Jayaram has, therefore, submitted that in the facts
of the case, rectification as made by the Assistant Registrar of Trade Marks
is rational and justified and such rectification should be permitted. E

After giving our careful consideration to the facts and circumstances
of the case and submissions made by the learned counsel for the parties,
it appears to us that the avowed object of the Trade Marks Act as indicated
in the Statement of objects and Reasons is "to enlarge the field of F
registrability". In these appeals, the propriety and validity of the order of
rectification arc only germane. It is not necessary to address on the
questions relating to infringement of trade mark or passing off or defensive
registration because such questions do not arise for decisions. There is no
dispute that the respondent No. 1. Company has been manufacturing
cigarettes under the brand name "Charminar" since 1943. In 1942 and 1955, G
the said Company got registration of the said brand pame "Charminar" for
the goods being classified as 'manufactured tobacco' in class 34 of 4th
Schedule in the Rules framed under Trade Marks Act. It is also not
disputed that the expression 11 Charminar 11 is not an inventive word which is
the condition precedent for defensive registration under Section 47 of the H
356 SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.

A Trade Marks Act (Section 38 of the Trade Marks Act of 1940). No
evidence has been led by the Respondent Company that the Respondent
Company had really intended or even now intends to manufacture any
other product of tobacco other than cigarettes. It will be appropriate to
refer to Class 34 of Schedule 4 which is to the following effect :

B 11
34 tobacco raw or n1anufactured, smokers' articlf'._s n1atchcs. 11

'Manufactured tobacco' is a broad genus covering large variety of
goods and articles. It has been rightly indicated by the appellant that :

(a) tobacco may be consumed by smoking and articles made of
C tobacco which are consumed by smoking comprise of cigarettes, cigars,
cheroot, bidis, pipe tobacco.

(b) tobacco may be consumed by chewing and ingestion and this
category includes quiwam which is in the paste form and applied usually
D as an ingredient to 'pan'; zarda in the form of fine flakes (usually aromatic)
is applied to pan; gutka also in flakes which is chewed sometime with the
addition of lime (ehuna).

(c) tobacco consumed by inhalation. In this category snuff which is
in powder form and taken in or inhaled through nose may be mentioned .
E •
There is no manner of doubt that the varieties of articles made of
tobacco are differently used and they have their distinctive quality and
separate identity. These articles are also marketed as distinct articles of
use in different manner. In the common trade channel such articles are not
only held different and distinct articles but are marketed separately. It does
F not require any imagination to hold that snuff or quiwam are entirely
distinct products and even though the said product and the cigarettes,
bidis, cheroot are also made of tobacco and all such products may come
under the broad classification 'manufactured tobacco', each of the said
products is always held as a distinct and separate article of use having its
G specific characteristics.

The respondent Company got registration of its brand name "Char-
minar" under the broad ·classification 'manufactured tobacco.' So long such
registration remains operative, the respondent Company is entitled to claim
exclusive use of the said brand name in respect of articles made of tobacco
H coming under the said broad classification manufactured tobacco. Precisely
VJSHNUDA."!TRD.ASVJDHNUDASKISHENDASv. VAZIRSULTAN1DBACCOCO. LTD. [G.N.RAY,J.] 357

for the said reason, when the appellant made application for registration A
of quiwani and zarda under the same brand name Charminar'' such prayer
11
1

for registration was not allowed. The· appellant, therefore, made applica-
tion for rectification of the registration made in favour of the respondent
Company so that the said registration is limited only in respect of the
articles being manufactured and marketed by the respondent Company, B
namely, cigarettes. In our view, if a trader or manufacturer actually trades
in or manufactures only one or some of the articles coming under a broad
classification and such trader or manufacturer has no bonafide intention to
trade in or manufacture other goods or articles which also fall under the
said broad classification, such trader or manufacturer should not be per-
mitted to enjoy monopoly in respect of all the articles which may come c
under such broad classification and by that process preclude the other
traders or manufacturers to get registration of separate and distinct goods
which may also be ground under the broad classification. If registration has
been given generally in respect of all the articles coming under the broad
classification and if it is established that the trader or manufacturer who D
get such registration had not intended to use any other article except the
articles being used by such trader or manufacturer, the registration of such
trader is liable to be rectified by limiting the ambit of reb~stration and
confining such registration to the specific article or articles which really
concern the trader or manufacturer enjoying the registration made in his E
favour. In our view, if rectification in such circumstances is not allowed,
the trader or manufacturer by virtue of earlier registration will be per-
mitted to enjoy the mischief of trafficking in trade mark. Looking to the
Scheme of the registration of trade mark as envisaged in the Trade Marks
Act and the Rules framed thereunder, it appears to us that registration of
a trade mark cannot be held to be absolute, perpetual and invariable under
F
all circumstances. Section 12 of the Trade Marks Act prohibits registration
of identical or deceptively similar trade marks in respect of goods and
description of goods which is identical or deceptively similar to the trade
mark already registered. For prohibiting registration under Section 12(1),
goods in respect of which subsequent registration is sought for, must be (i) G
in respect of goods or description of goods being same or similar and
covered by earlier registration and (ii) trade mark claimed for such goods
must be same or deceptively claimed for such goods must be same or
deceptively similar lo the trade mark already registered. It may be noted
here that under sub-section (3) of Section 12 of Trade Marks Act, in an H
358 SUPREME COURT REPORTS [1996] SUPP. 3 S.C.R.

A appropriate case of honest concurrent use and/or of other special cir-
cumstances, same and deceptively similar trade marks may be permitted
to another by the Registrar, subject to such conditions as may deem just
and proper to the Registrar. lt is also to be noted that the expression
"goods" and "description of the goods" appearing in Section 12(1) of Trade
Marks Act indicate that registration may be made in respect of one or more
B goods or of all goods conforming a general description. The Trade Marks
Act has noted distinction between description of goods forming a genus
and separate and distinctly identifiable goods under the genus in various
other Sections e.g. goods of same description in Section 46, Section 12 and
34 and class of goods in Section 18. Rules 12 and 26 read with 4th Schedule
C to the Rules framed under the Act.

The "class'"mentioned in the 4th Schedule may subsume or comprise
a number of goods or articles which are separately identifiable and ven-
dible and which are not goods of the same description as commonly
D understood in trade or in common parlance. Manufactured tobacco is a
class mentioned in Class 34 of 4th Schedule of the Rules but within the
said class, there are number of distinctly identifiable goods which arc
marketed separately and also used differently. In our view, it is not only
permissible but it will be only just and proper to register one or more
E articles under a class or genus if in reality registration only in respect of
such articles are intended, by specifically mentioning the names of such
articles and by indicating the class under which such article or articles are
to be comprised. It is, therefore, permissible to register only cigarette or
some other specific products made of manufactured tobacco as mentioned
in Class 34 of 4th Schedule of the Rules. In our view, the contention of Mr.
F Vaidyanathan that in view of change in the language of Section 8 of Trade
Marks Act as compared to Section 5 of Trade Marks Act 1940, registration
of trade mark is to be made only in respect of class or genus and not in
respect of articles of different species under the genus is based on incorrect
appreciation of Section 8 of the Trade Marks Act and 4th Schedule of the
G Rules.

Since such registration initially had not been done, the rectification
of the registration by limiting or confining the registration of trade mark
of the Respondent Company to particular goods, namely, cjgarettes, in the
H facts and circumstances of the case, cannot be held as illegal or justified.
VISHNUDAS'IRD.ASVJDHNUDAS KISH EN DAS v. VAZIR SULTAN TOBACCO CO. LTD. [G.N. RAY. J.] 359

It has already been indicated that the controversy in the instant A
appeals, is only confined to the propriety and validity of the order of
rectification of the registration of trade mark made in favour of Respon-
dent Company and it is not necessary to address on the questions of
infringement of trade marks, passing off, defensive registration etc. In that
view of the matter, various decisions cited at the bar dealing with the likely
B
prejudice to be suffered by a trader or manufacturer enjoying registration
of trade mark in the event, similar or deceptively similar trade mark is
allowed to other trader or manufacturer in respect of similar goods or
goods marketed through common trade channel need not be taken into
consideration for the disposal of these appeals. As in the facts and cir-
cumstances of the case, the rectification of the trade marks registered in c
favour of the respondent Company since allowed by the Assistant Registrar
of Trade Marks was valid and also justified, such order in our view, should
not have been interfered with in appeal. We, therefore, allow these appeals,
set aside the impugned judgments of the High Court and restore the order
of rectification passed by the Assistant Registrar of Trade Marks, Madras. D
By way of abundant caution, it is expressly made clear that we have not
expressed any opinion on the claim of registration of the trade mark
"Charminarn in favour of the appellant for quilvani and zarda being
manufactured and traded by the appellant. In the facts of the case, there
will however be no order as to costs.
E
B.K.M. Appeals allowed.