LAL BABU PRIYADARSHIversusAMRITPAL SINGH

                  [2015] 12 S.C.R. 1009


                LAL BABU PRIYADARSHI                         A

                            v.
                    AMRITPAL SINGH
              (Civil Appeal No. 2138 of 2006)
                    October27, 2015                          B

      [RANJAN GOGOi AND R.K. AGRAWAL, JJ.]
     Trade Marks Act, 1999 - s. 9(2) - Registration of trade
mark - Refusal of - Application for registration of word
'RAMAYAN' with the device of crown in respect of incense C
sticks (agarbatties) and perfumeries etc. by appellant -
Opposition application by respondent, dismissed by the
Assistant Registrar of Trade Mark- However, appeal by the
respondent allowed by the appellate Board- On appeal, held:
There is no irregularity in the order passed by the Board - · D
No person can claim the name of a holy or religious book as
a trade mark for his goods or services marketed by him -
Appellant did not establish that the word "RAMAYAN" for
which he has applied the trade mark had acquired a E
reputation of user in the market since many traders were using
the word "RAMAYAN" as a mark for the similar products -
Also, respondent was using the artistic mark earlier in point
of time to that of the appellant.
    Dismissing the appeal, the Court                         F
     HELD: 1.1 There are many holy and religious books
like Quran, Bible, Guru Granth Sahib, Ramayan etc., to
name a few. No person can claim the name of a holy or
religious book as a trade mark for his goods or services
                                                             G
marketed by him. Moreover, the appellant has not been
able to establish that the word "RAMAYAN" for which he
has applied the trade mark had acquired a reputation of
user in the market inasmuch as, there are more than 20
traders in the city using the word "RAMAYAN" as a mark       H
                           1009
1010      SUPREME COURT REPORTS              (2015] 12 S.C.R.


 A for the similar products and also in different parts of the
   country. [Para 18, 19) [1020-G-H; 1021-A-B]
        1.2 On a perusal of the artistic work said to have been
  created, there is no doubt that both the marks are
  identical in design, colour, scheme and the reproduction
8
  of photographs is in such a manner that_an ordinary
~ buyer would reasonably come to a mistaken conclusion
  that the article covered by one brand can be the article
  covered by the other. Both the parties have claimed to
c be manufacturing units engaged in certain goods.
  Further, the respondent claimed that though he had been
  in the business since 1980, he had developed and
  published the artistic work in 1986 and has also been
  using the mark as a trademark and claiming use since
D 1986 whereas the appellant claimed use of the trademark
  since 1987. However, by filing an application, the
  appellant has claimed the use since 1981. From the facts,
  it is clear that the respondent was using the artistic mark
  earlier in point of time to that of the appellant. There is
E no irregularity in the order passed by the Board while
  setting aside the order passed by the Assistant Registrar
  of Trade Marks that the trade mark consists of device of
  crown and the word "RAMAYAN" is capable of
F distinguishing the goods and is not included in the list
  of marks not registrable under the Act, di9missed the
  application filed by the respondent. [Para 2, 20, 21, 22)
  [1012-E-F; 1021-C-E, F-H]
         Registrar of Trade Marks vs. Ashok Chandra
 G       RakhitAIR 1955 SC 558:1955 SCR 252; Mumbai
         International Airport Private Limited vs. Golden
         Chariot Airport and Another (2010) 10 SCC 422:
         2010 (12 ) SCR 326 ; K.R. Chinna Krishna
         Chettiar vs. Sri Ambal & Co. AIR 1970 SC 146:
 H
         1970 ( 1 ) SCR 290; Corn Products Refining
    LAL BABU PRIYADARSHI v. AMRITPAL SINGH                   1011



     Co. vs. Shangrila Food Products Ltd. 1960 (1)           A
     SCR 968; National Bell Co. vs. Metal Goods Mfg.
     Co. {P) Ltd. and Another 1970 (3) SCC 665: 1971
     (1) SCR 70 - referred to.
                   Case Law Reference                         B
    1955 SCR 252            referred to.         Para 6
    2010 (12) SCR 326       referred to.         Para 7
    1970 ( 1 ) SCR 290      referred to.         Para 7
    1960 (1) SCR 968        referred to.         Para 8
                                                              c
    1971 (1) SCR 70         referred to.      ·Para 10
   CIVIL APPELLATE JURISDICTION: Civil Appeal No.
2138of2006.
                                                              D
     From the Judgment and Order dated 10.01.2005 of the
intellectual Property Appellate Board at Circuit Bench at
Kolkata in Original Appeal No. 35/2004!TM/KOL.
     Anuradha Salhotra, K. V. Mohan, Sumit Wadhwa, Advs.,
                                                              E
for the Appellant.
    Sudhir Chandra, Sr. Adv., Sohan Singh, Bindra Rana,
Priya Adlakha, Mis. S. S. Rana & Co., Advs., for the
Respondent.
                                                              F
    The Judgment of the Court was delivered by
    R.K. AGRAWAL, J. 1) The present aP.peal has been filed
against the order dated 10.01.2005 passed by the Intellectual
Property Appellate Board (in short 'the Board') in Original
Appeal No. 35/2004!TM/KOL whereby the Board allowed the· G
appeal filed by the respondent herein while setting aside the
order dated 31.03.2004 passed by the Assistant Registrar of
Trade Marks.
    2) Brief facts:.                                          H
1012         SUPREME COURT REPORTS                 [2015] 12 S.C.R.


 A          (a) One Shri Lal Babu Priyadarshi-the appellant herein,
       trading as M/s Om Perfumery, Bakerganj, Daldali Road, Patna
       made an application to the Registrar of Trade Marks to register
       a trade mark by name "RAMAYAN" with the device of crown in
       class 3 in respect of incense sticks (agarbattis, dhoops) and
 8     perfumeries etc.
        (b) One ShriAmritpal Singh-the respondent herein, was a
   dealer for the sale of the products of the appellant herein and
   was also trading as Mis Badshah Industries, Chitkohra, Punjabi
 c Colony, Patna. The respondent herein filed a Notice of
   Opposition to oppose the registration of aforesaid trade mark
   under Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1)
   of the Trade and Merchandise Marks Act, 1958 [repealed by
   the Trade Marks Act, 1999 (47 of 1999)-in short 'the Act']
 D claiming that the impugned mark, being the name of a religious
   book, cannot become the subject matter of monopoly for an
   individual.
         (c) The Assistant Registrar of Trade Marks, after holding
 E that the impugned trade mark consists of device of crown and
   the word "RAMAYAN" is capable of distinguishing the goods
   and is not included in the list of marks not registrable under
   the Act, by order dated 31.03.2004, dismissed the application
   filed by the respondent herein.
 F
            (d) Being aggrieved by the order dated 31.03.2004, the
       reispondent herein preferred an appeal before the Board being
       Original Appeal No. 35/2004/TM/KOL. The Board, by order
       dated 10.01.2005, set aside the order dated 31.03.2004,
 0     passed by the Assistant Registrar of Trade Marks.
           (e)Aggrieved by the order dated 10.01.2005, the appellant
       has filed this appeal by way of special leave.
        3) Heard Ms. Anuradha Salhotra, learned counsel for the
 H appellant and Mr. Sudhir Chandra, learned senior counsel for
   the respondent.
    LAL BABU PRIYADARSHI v. AMRITPAL SINGH                     1013
               [R.K.AGRAWAL, J.]

    4) The sole question for consideration before this Court A
is whether the registration of the word "RAMAYAN'' as a trade.
mark, being the name of a Holy Book of Hindus, is prohibited
under Section 9(2) of the Trade Marks Act, 1999?
Rival submissions:                                              B
     5) Learned counsel for the appellant submitted that the
appellant was in the business of manufacturing, trading.and
marketing of incense sticks since 1981 and the respondent
herein was a dealer of the appellant herein. The goods under
the trade mark "RAMAYAN" have been advertised by him c
through various means including the publication of cautionary
notices in newspapers. Learned counsel further submitted that
through extensive use, wide advertisement and the excellent
quality of the products, the trademark "RAMAYAN" and the D
carton in which the products are sold has become distinctive
in such a manner that use of the same or similar trademark or
carton by any other person will cause confusion and deception
in the trade and amongst the public. The sale was done through
a network of dealers and distributors and the respondent herein E
was a dealer of the appellant herein. Learned counsel
submitted that after the termination of dealership, the
respondent herein started selling incense sticks under the trade
mark "RAMAYAN" written in the same style and manner.
                                                                F
     6) Learned counsel further contended that the mere fact
that the trade mark, being the name of a religious book, cannot
be a sufficient ground for refusal of registration under Section
9(2) of the Act and is not based on evidence on record that the
feelings of any section of the Hindus having been hurt by its G
use in relation to incense sticks. She further submitted that
the Assistant Registrar of Trade Marks rightly held that the
impugned trade mark consists of device of crown and the word
is capable of distinguishing the goods of the appellant herein
and the trade mark is not included in the list of marks not H
registrable under the Act. She further claimed that it has already
1014       SUPREME COURT REPORTS                   [2015] 12 S.C.R.


 A  been proved before the Court of Assistant Registrar that the
  . appellant was using the trade mark since 1981 and hence, is
    the prior user in comparison to therespondent. According to
    the learned counsel, the Board, totally misconstrued the
    observations of the Standing Committee in the Eighth Report
 8 on the Trade Marks Bill, 1993. Relying upon Clause 13.3 of
    the said report, it was submitted that even though the Committee
    had observed that "any symbol relating to religious gods,
    goddesses, places of worship should not ordinarily be
 c mgistered as a trade mark", it specifically refrained from
    prohibiting registration of such marks. It was further submitted
    that the Board has erroneously relied upon the decision of this
    Court in Registrar of Trade Marks vs. Ashok Chandra
    RakhitAIR 1955 SC 558 by proceeding on the basis thatthe
 0 said case was an authority on the question that all religious
    names or symbols are prohibited from being registered
    whereas the fact of the matter is that this Court had merely
    upheld the concurrent findings of the Registrar and the High
    Court that the word 'SH REE' was incapable of distinguishing
 E the goods of any one trader. The said case is also
    distinguishable by the fact that it was the invariable practice of
    the trade mark office not to register the word' SH REE' but this
    is not so with the word "RAMAYAN".

 F      7) Relying upon a decision of this Court in Mumbai
   International Airport Private Limited vs. Golden Chariot
   Airport and Another (2010) 10 SCC 422, it is further
   submitted that the respondent herein had himself claimed the
   use of the identical mark and therefore, it did not lie in his mouth
 G to object to the registration of the word in the name of the
   appellant. She further contended that the Board ought to have
   seen that there are several cases which indicate that the use
   of the names of Hindu deities as trade mark is a common
   practice and no one has complained about the same being
 H sensitive to Hindu religious sentiments for which reliance was
      LAL BABU PRIYADARSHI v.AMRITPALSINGH                   1015
                 [R.K.AGRAWAL, J.]

placed on a decision of this Court in K.R. Chinna Krishna A
Chettiarvs. SriAmbal & Co.AIR 1970 SC 146.
    8) Learned counsel also placed reliance on Corn
Products Refining Co. vs. Shangrila Food Products Ltd.
1960 (1) SCR 968 in support of the submission that before B
the applicant can seek to derive assistance for the success of
his application from the presence of a number of marks having
one or more common features which occur in'his mark also,
he has to prove that those marks had acquired a reputation by
user in the market.                                            c
     9) Learned counsel finally contended that the Board erred
in law while setting aside the judgment of the Assistant
Registrar of Trade Marks while holding adversely about its
distinctiveness, the mark causing deception and not having
                                                               0
been used in an honest manner.
      10) Learned senior counsel for the respondent contended
that the impugned mark, being name of a religious book,
cannot become the subject matter of monopoly for an individual.
He further contended that the mark "RAMAYAN" is not a E
distinctive mark and is devoid of any distinctive character. The
mark is not capable of distinguishing the goods of one person
from those of another. It was also contended that the m~rk
"RAMAYAN" is not registrable since it is the name ofa famous
and well known religious book. It was also claimed that more F
than 20 traders in Patna and many more are using the trade
mark and thus it has become public juris. In support of the.
same, learned senior counsel placed reliance upon a decision
of this Court in National Beff Co. vs. Metal Goods Mfg. Co. 0
(P) Ltd. and Another1970 (3) SCC 665. He further submitted
that the impugned mark is identical with the respondent's mark
"BADSHAH RAMAYAN" which is pending registration and the
 impugned registration will cause harassment to other traders
 and purchasing public would be bound to be confused and H
 deceived. Learned senior counsel finally claimed that the Board
1016         SUPREME COURT REPORTS                  [2015] 12 S.C.R.


 A     was right in setting aside the order dated 31.03.2004 passed
       by the Assistant Registrar of Trade Marks.
           11) We have carefully gone through the relevant documents
       and perused the material on record.
 B Discussion:
            12) The appellant herein filed an application dated
       25.08.1994 being No. 638073-B in class 3 for registration of
       a trade mark consisting of the word "RAMAYAN" with the
 c     device of crown in respect of incense sticks (agarbatties) and
       perfumeries etc. The appellant herein claimed the user since
       01.01.1987. He furtherfiled a request to rectify the user from
       01.01.1981 which was allowed by the Assistant Registrar of
       Trade Marks. While opposing the application in class 3 for
 D     registration of the trade mark, the respondent herein filed a
       noticeofoppositionunderSections9, 11(a), 11(b), 11(e), 12(1)
       and 18(1) of the Act. He claimed the use of the trade mark
       "BADSHAH RAMAYAN" prior to the appellant herein. The
       respondent herein put forth an objection that the impugned
 E     mark, being name of a religious book, cannot become the
       subject matter of monopoly for an individual. He further added
       that his application for the registration of the same trade mark
       claiming user since 05.11.1986 is pending for registration. The
       application was further opposed with the reasoning that it
 F
       carries a large sentimental value for the people and therefore,
       no one can claim sole right to the use of such a word. It was
       also admitted by the respondent herein that more than 20
       traders in Patna are using the trade mark "RAMAYAN". Finally,
 G     it was submitted that the impugned mark is identical with the
       respondent's mark "BADSHAH RAMAYAN"which is pending
       registration and the impugned registration will cause confusion
       among general public. Though the Assistant Registrar of Trade
       Marks dismissed the application filed by the respondent herein,
 H     the Board set aside the said order after holding that the trade
       mark "RAMAYAN" is not distinctive of the goods of the appellant
      LAL BABU PRIYADARSHI v.AMRITPALSINGH                          1017
                 [R.K. AGRAWAL, J.]

as it is being used as a mark for the same products by more A
than 20 traders in Patna and in different parts of the country
and has become public juris and common to the trade.
      13) In view of the above, it is relevant to mention Section
9 of the Act which reads as under:-                               B
       "9. Absolute grounds for refusal of registration -
       (1) The trade marks -
         (a) which are devoid of any distinctive character, that
         is to say, not capable of distinguishing the goods or       c
         services of one person from those of another person;
         (b) which consist exclusively of marks or indications
         which may serve in trade to designate the kind, quality,
         quantity, intended purpose, values, geographical
                                                                  D .
         origin or the time of production of the goods or
         rendering of the service or other characteristics of the
         goods or service;
         (c) which consist e~clusively of marks or indications
         which have become customary in the current                  E
         language or in the bona fide and established practices
         of the trade,
      shall not be registered:
      Provided that a trade mark shall not be refused                F
      registration if before the date of application for
      registration it has acquired a distinctive character as a
      result of the use made of it or is a well-known trade mark.
      (2) A mark shall not be registered as a trade mark if -
                                                                     G
         (a) it is of such nature as to deceive the public or
         cause confusion;
         (b) it contains or comprises of any matter likely to hurt
         the religious susceptibilities of any cJass or section H
         of the citizens of India;
1018       SUPREME COURT REPORTS                 [2015] 12 S.C.R.


 A            (c) it comprises or contains scandalous or obscene
              matter;
              (d) its use is prohibited under the Emblems and
              Names (Prevention of Improper Use) Act, 1950 (12
 B            of 1950).
          (3) A mark shall not be registered as a trade mark if it
          consists exclusively of-
              (a) the shape of goods which results from the nature
 c            of the goods themselves; or
              (b) the shape of goods which is necessary to obtain
              a technical result; or
              (c) the shape which gives substantial value to the
 D            goods.
          Explanation. - For the purposes of this section, the
          nature of goods or services in relation to which the trade
          mark is used or proposed to be used shall not be a
          ground for refusal of registration."
 E
        This section stipulates that the trade marks which are
   devoid of any distinctive character or which consist exclusively
   of marks or indications which may serve in trade to designate
   the kind, quality, quantity, intended purpose, values,
 F geographical origin or the time of production of goods or
   rendering of the services or other characteristics of the goods
   or service or which consist exclusively of marks or indications
   which have become customary in the current language or in
   the bona fide and established practice of the trade shall not
 G be registered, unless it is shown that the mark has in fact
   acquired a distinctive character as a result of use before the
   date of application. It also provides that a mark shall not be
   registered as trade marks if (i) it deceives the public or causes
   confusion, (ii) it contains or comprises of any matter likely to
 H hurt the religious susceptibilities, (iii) it contains scandalous
      LAL BABU PRIYADARSHI v. AMRITPAL SINGH                     . 1019
                 [R.K. AGRAWAL, J.]

or obscene matter, (iv) its use is prohibited. It further provides A
that if a mark consists exclusively of (a) the shape of goods
which form the nature of goods themselves, or (b) the shape
of goods which is necessary to obtain a technical result, or (c)
the shape which gives substantial value of the goods then it
                                                                   8
shall not be registered as trade mark.
     14) From Clause 13.3 of the Eighth Report on the Trade
Marks Bill, 1993 submitted by the Parliamentary Standing
Committee, we find that the Committee expressed its opinion
that any symbol relating to Gods, Goddesses, places of c
worship should not ordinarily be registered as a trade mark.
However, the Committee did not want to disturb the existing
trade marks by prohibiting their registration as it will result in a
chaos in the market. At the same time, the Committee trusted
that Government will initiate appropriate action if someone D
 complaints that a particular trade mark is hurting his religious
 susceptibilities. This report was presented on 21.04.1994.
 When the report was presented, the appellant's trade mark
 had not been registered and the application filed by the
                                                                     E
.respondent herein opposing its registration was dismissed
 only on 31.03.2004 by the Assistant Registrar of Trade Marks.
      15) The word "RAMAYAN" represents the title of a book
written by Maharishi Valmiki and is considered to b~ a religious
book of the Hindus in our country. Thus, using exclusive name F
of the book "RAMAYAN", for getting it registered as a trade
mark for any commodity could not be permissible under the
Act. If any other word is added as suffix or prefix to the word
"RAMAYAN" and the alphabets or design or length of the words
are same as of the word "RAMAYAN" then the word G
"RAMAYAN" may lose its significance as a rengious book and
it may be considered for registration as a trade mark.
However, in the present case, we find that the appellant had
applied for registration of the word "RAMAYAN" as a trade H
mark. We also find that in the photographs, after adding "OM's"
1020         SUPREME COURT REPORTS                 [2015] 12 S.C.R.


 A to the word "RAMAYAN", atthe top and in between "OM's and
   RAMAYAN", the sentence, "Three Top Class Aromatic
   Fragrance", is also written. Thus, it is not a case that the
   appellant is seeking the registration of the word "OM's
   RAMAYAN" as a trade mark. Further, from the photographs,
 8 we find that the photographs of Lord Rama, Sita and
   Lakshman are also shown in the label which is a clear
   indication that the appellant is taking advantage of the Gods
   and Goddesses which is otherwise not permitted.
 c       16) In National Bell Co. (supra), this Court has held that
   the distinctiveness of the trade mark in relation to the goods of
   a registered proprietor of such a trade mark may be lost in a
   variety of ways e.g. by the goods not being capable of being
   distinguished as the goods of such a proprietor or by extensive
 D piracy so that the marks become public juris. The principle
   underlying clause (c) of Section 32 is that the property in a
   trade mark exists so long as it continues to be distinctive of
   the goods of the registered proprietor in the eyes of the public
   or a section of the public. If the proprietor is not in a position to
 E use the mark to distinguish his goods from those of others or ·
   has abandoned it or the mark has become so common in the
   market that it has ceased to connect him with his goods, there
   would hardly be any justification in retaining it on the register.
 F          17) It has also come on record that the word "RAMAYAN"
       is being used as a mark for the similar products by more than
       20 traders in Patna and in different parts of the country, and
       therefore, it has become publicjuris and common to the trade.
 G     Conclusion:
        18) There are many holy and religious books like Quran,
   Bible, Guru Granth Sahib, Ramayan etc., to name a few. The
   answer to the question as to whether any person can claim the
   name of a holy or religious book as a trade mark for his goods
 H or services marketed by him is clearly 'NO'.
       LALBABU PRIYADARSHlv.AMRITPALSINGH                            1021
                 [R.K.AGRAWAL; J.]

     19) Moreover, the appellant has not been able to establish A
that the word "RAMAYAN" for which he has applied the trade
mark had acquired a reputation of user in the market inasmuch
as, we find th;:lt there are more than 20 traders in the city using
the word "RAMAYAN" as a mark for the similar products and
                                                                    8
also in different parts of the country.
      20) On a perusal of the artistic work said to have been
created, there is no doubt that both the marks are identical in
design, colour, scheme and the reproduction of photographs
is in such a manner that an ordinary buyer would reasonably           c
come to a mistaken conclusion that the article covered by one·
brand can be the article covered by the other. Both the parties
have claimed to be manufacturing units engaged in certain
goods.
                                                                 D
     21) Further, the respondent herein claimed that though he
had been in the business since 1980, he had developed and
published the artistic work in 1986 and has also been using
the mark as a trademark and claiming use since 1986 whereas
the appellant herein claimed use of the trademark since 1987. E
However, by filing an application to the concerned authority,
the appellant has claimed the use since 1981. Further, in
various pleadings in the Title Suits filed by the respondent
herein, the appellant herein has admitted the use and
publication of the artistic mark of the respondent before the F
date of claim of the first use by the appellant, that is, 1987.
From these facts, it is clear that the respondent herein was
using the artistic mark earl-ier in point of time to that of the
appellant herein.
                                                                      G
     22) In view of the foregoing discussion, we do not find any
irregularity in the order passed by the Board dated 10.01.2005,
consequently, the appeal fails and is accordingly dismissed.
However, the parties are left to bear their own costs.
Nidhi Jain                                       Appeal dismissed.    H