Introduction

• This is a leading case law on the requisites for registration and grounds for refusal of registration of Trademarks.

Facts

• The appellants filed an application for registration of the trademark consisting of the word ‘Janta’ in respect of electric torches before the Assistant Registrar of Trademarks, Delhi.
• The Assistant Registrar declined to register the appellant's trademark on the ground that it was neither distinctive nor capable of distinguishing.
• The appellants contended that the word 'Janta' meant knowledge in Hindi and was distinct from the word ‘Janta’ (meaning people).
• The Assistant Registrar held that the word 'Janta' was equivalent to ‘Janta’ and had a direct reference to the character or quality of the goods (indicating cheap price for common people).
• The appellants argued that the word ‘Janta’ acquired distinctiveness through extensive use and could distinguish their goods.

Issues Involved

• Whether the word ‘Janta’ has direct reference to the character or quality of the goods?
• Whether the word ‘Janta’ is neither inherently distinctive nor inherently capable of distinguishing?
• Whether the word ‘Janta’ by reason of its use is in fact adapted to distinguish or is in fact capable of distinguishing the appellant’s goods?

Observations

• The Court held that the word ‘Janta’ did not have a direct reference to the character or quality of the goods and was not disqualified for registration under Section 9(1)(d) of the Trade and Merchandise Marks Act, 1958.
  • However, the Court found that the word 'Janta' was not inherently distinctive or capable of distinguishing the appellant's goods under Section 9(4) and 9(5)(a) of the Act.
• Regarding Section 9(5)(b), which allows registration based on acquired distinctiveness through use, the Court held that although the appellant's 'Janta' torches had acquired reputation, the word 'Janta' was not adapted to distinguish or capable of distinguishing the appellant's goods.
• The Court also upheld the Assistant Registrar's exercise of discretion under Section 18(4) to decline registration, citing valid grounds that the word 'Janta' should be kept open for public use and the appellant should not have a monopoly over it.
• Consequently, the Court dismissed the appeal and upheld the Assistant Registrar's order refusing registration of the trademark 'Janta' for electric torches.

Note

Section 9 of the Trade and Merchandise Marks Act, 1958- Requisites for registration in Parts A and B of the register

(1) A trademark 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 trademark is distinctive or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which—

(a) a trademark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and

(b) by reason of the use of the trademark or of any other circumstances, the trademark 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 trademark 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 trademark or any part or parts thereof.