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

Citation: [1996] SUPP. 3 S.C.R. 329 · Decided: 09-07-1996 · Supreme Court of India · Bench: G.N. RAY · Disposal: Appeal(s) allowed

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Judgment (excerpt)

r 
VISHNUDAS TRADING AS VJDHNUDAS KISHENDAS 
A 
v. 
THE VAZIR SULTAN TOBACCO CO. LTD., 
HYDERABAD AND ANR. 
JULY 9, 1996 
[G.N. RAY AND G.B. PATTANAIK, JJ.] 
Trade & Merchandise Marks Act, 195&-Sections 46 & 56-Application 
B 
for rectification on ground of non-use1-Respondent manufactwing only 
cigarettes under a trade mark registered in respect of "manufactured tobac-
C 
co
11_Appellant ntanufactzuing 
11quiwan1" and 
1Zarda
11 under the sa111e trade 
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 
B 
c 
in faYour of rcs1utndent No. 1 \Vas restricted to cigarettes. 
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. 
It was further held that for registration of an article under Class 34, it was 
not 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; 
F 
(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 
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 
11description 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

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