The proceedings before the Registrar of Trade Marks companytinued from 1973 76 but the respondent No.1 Company though companytested the said applications companyld number 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.
As aforesaid, the said decision of the Division Bench of Madras High Court is under challenge in these appeals.
The said Company obtained registration of Trade Marks for manufacturing tobacco in relation to the cigarrettes bearing the said brand name falling under Class 34 of the 4th Schedule of the Trade Mark Rules framed under the Trade Marks Act 1940.
It was inter alia held by the Division Bench of the Madras High Court that there companyld be numberseparate registration in respect of cigarettes as Class 34 spoke only of manufactured tobacco and that ground alone was sufficient for setting aside the order of the Assistant Registrar.
1 the respondent Company is and always has been solely manufacturing cigarettes under the brand name of charminar ever since 1942 and 1955.
The appellant applied for registration of cuiwam and zarda with trade mark Charminar under the Trade and Merchandise Marks Act 1958 and the Trade Marks Rules, 1959 framed under the said Act.
Accordingly, on October 15, 1973, the appellant filed two applications under Section 46 read with Section 56 of the Trade and Mechandise Marks Act.
vi When the appellant had applied for registration of the 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 Companys said registered trade mark in relation to the cigarettes for which the appellant was companystrained to get the register rectified in relation to the respondent Companys trade mark.
Hence, the respondent No.1 Companys trade mark companyld number be removed or restricted on the ground of number use with reference to goods of different specifications such as quiwam and zarda falling under the class manufactured tobacco even if quiwam and zarda had never been manufactured or were intended to be manufactured by the respondent No.1 Company.
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 number necessary to establish user of the trade mark and rectification as ordered by the Assistant Registrar would enable the appellant to pass them as the goods manufactured by the respondent No.1 Company.
9951 and 170427 which the respondent No.1 Company obtained in 1942 and 1955.
The Division Bench also held that manufacture of cigarettes would companye under manufactured tobacco.
The said Company in 1942 and in 1955, under the then Trade Mark legislation obtained registration of Trade Mark in respect of manufactured tobacco falling in Class 34 of the 4th Schedule to the rules framed under the Trade Marks Act 1940 and 1950 Act.
The respondent No.1 Company, namely, the Vazir Sultan Tobacco Co. Ltd. Hyderabad, has been manufacturing cigarrettes under the brand name Charminar.
The Division Bench further 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 abscence of rectification of the trade marks in the register in favour of the Respondent No.1 Company, the said registration was companyclusive of the matter ad the rectification applications were number maintainable.
Hence, the proceedings under Section 46 read with Section 56 of the Trade Marks Act had to be initiated by the appellant.
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 companyflict with registered trade marks Nos.
9951 and 170427 would be rectified by making the entries relating to specification of goods to read as cigarettes.
The learned Single Judge, in his order allowing the said appeals, had observed that the Assistant Registrar of Trade Marks had made a sub classification of manufactured tobacco occurring in Class 34 although sub classification companyld number be made.
By a companymon judgment dated September 11, 1980, the learned Single Judge allowed the said appeals preferred by the respondent No.1 and set aside the order of the Assistant Registrar, Trade Marks, dated August 31, 1976.
Respondent No.1 Company thereafter preferred two statutory appeals under Section 109 2 of the Trade and Merchandise Marks Act before a learned Single Bench of Madras High Court.
9951 and 170427.
1957 on the brand name and device of charminar as depicted by the appellant.
Since 1973 the appellant has been manufacturing quiwam 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 companypared to that used by the respondent Company on its cigarette packets and cartoons.
It was numbered in the minute that the companynsel for the applicant i.e. the appellant herein, had offered to apply for rectification of the said trade mark in favour of the respondent No.1 Company.
It is the name of a well known 18th century monument standing as a landmark in the city of Hyderabad.
It was also observed that although the applicant had companytended that such registration of trade marks was in respect of cigarettes but quiwam and zarda were goods of different specifications and such goods would number cause any companyflict with the goods being manufactured by the respondent No.1 Company, since the registration was of the trade mark made in favour of the respondent to 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, companyld number be waived.
The appellant also holds a duly registered companyyright under the Copyright Act.
The Assistant Registrar Trade Marks ordered that the Registrar, Trade Mark, bearing Nos.
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.
Against the judgment and order passed by the learned Single Bench, the appellant preferred two statutory appeals under Section 109 5 of the said Trade and Merchandise Marks Act, 1958 hereafter referred to as Trade Marks Act before a Division Bench of the Madras High Court and by the impugned companymon judgment dated October 11, 1990, the Division Bench dismissed the said appeals thereby affirming the order passed by the learned Single Bench of Madras High Court.
The respondent Company raised objections that the trade mark sought by the appellant would companyflict with the registered Trade Nos.
582 83 of 1978.
1958 before the Registrar of Trade Marks, Madras for rectifying the registration of existing trade mark held by the respondent No.1 Company mainly on the ground of number user of the same in respect of quiwam and zarda by the respondent No.1 Company.
N. Ray, J. Leave granted.
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.
Heard learned companynsel for the parties.
The respondent No.1 Company, however, did number manufacture anything other than cigarettes during all these long years.
These appeals are directed against the companymon judgment dated October 11, 1990 passed by the Division Bench of Madras High Court in Trade Mark Second Appeal Nos.1 and 2 of 1981 arising out of the judgment dated September 11, 1980 passed by a Single Bench of Madras High Court in AAO Nos.
The appellant, namely, Vishnu Das Trading as Vishnudas Kishendas Zarda are manufacturing quiwam and zardasince 1973 and the appellant has been using the same trade mark, namely, Charminar on his bottles and boxes of quiwam and zarda.
