Monday, January 16, 2012

Judgment of IPAB in Red Label

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
TA/47/2003/TM/CH, OA/34/2004/TM/CH, OA/69/2004/TM/CH
 Hon’ble Smt. Justice Prabha Sridevan                   …  Chairman
Hon’ble Ms. S. Usha                                                     …  Vice-Chairman
M/s. Hindustan Unilever Limited
Brooke Fields, Marathahalli P.O.,
Bangalore-560037.                                                          …  Appellant
 (Appellant name amended as per order of the Board dated 29.9.2008 in M.P. Nos.180, 181 & 182/2008)

1.  M/s. Girnar Exports, traded by
Sri Harenda Shantilal Shah
Viduit Navinchandra Shah
Milind Jagadishchandra Shah
Jitendra Shantilal Shah
Smt. Charulata Hemant Shah
Smt. Sarmista Praveen Bhansali
Sachin Praveen Bhansali
Utpal Navinchandra Shah and
Pravin Keshav Lal Bhansali
Girnar Complex, Kuresh Nagar,
Kurla (East)

2.   The Deputy Registrar of Trade Marks
      Trade Marks Registry at
 Rajaji Bhavan ‘D’ – Wing, 2nd Floor,
 Besant Nagar,
 Chennai-600090.                                                    … Respondents
M/s. Hindustan Unilever Limited, carrying on business
Inter alia, at
9, Shakespeare Sarani,
Calcutta.                                                                            …  Appellant

(Appellant name amended as per order of the Board dated 29.9.2008 in   M.P. No.183/2008)


1.         Girnar Exports
formerly known as Shantilal Bhansali
carrying on business at
            Girnar Complex, Kureshi Nagar,
            MUMBAI, formerly at
            75, New Bardan Lane,

2.         The Registrar of Trade Marks
            having his office at
            15/1, Chowringhee Square,
            1st Floor
            Calcutta-700069.                                                      … Respondents
    (By Advocate:  Shri Tehemtan N Daruwalla, Shri Darius Dalal)

ORDER (No. 5/2012)

Hon’ble Smt. Justice Prabha Sridevan, Chairman:

            The four appeals are against the orders passed by the Deputy Registrar, Trade Marks at Chennai in three proceedings and the Deputy Registrar at Kolkata in one. The mark is ‘Red Label’. Application No.397359 is for registration of the mark which is a label consisting of the word ‘Red Label’ with a colour scheme of ‘red and yellow’ in Roman and Arabic character in respect of tea (Class 30) which is the subject matter of TA/47/2003/TM/CH. The appellant who was the applicant claimed user from 1971. The application was dated 6.11.1982. It was advertised on 16.12.1995 in Journal No.1117 with a condition that it has to be associated with the mark 84984 and others. The application No.398076 is for registration of a carton with the expression ‘Red Label’ in the same colour scheme as above in respect of export (Class 30). It was applied for on 25.11.1982 which was advertised in the Journal No.1103 dated 16.5.1995. The user claim was from 1971. There was a disclaimer with regard to the use of “pure Indian tea” and other descriptive matters and it was directed that the mark shall be limited to the colour red and yellow. Against this OA/69/2004/TM/CH is filed. Trade mark bearing No.398077 is a label with the words ‘Red Label Tea’, ‘Pure Indian Tea’. This was also filed on the same date as above. It was advertised in the Journal No.1099 dated 16.3.1995. The user claim was from 1.1.1971. This is the subject matter of OA/34/2004/TM/CH. This and the matter above were heard together and a common order was passed. The trade mark application 453651 is for the label bearing the words ‘Red Label’ and monogram ‘RL’. The application is dated 7.5.1986 and it was advertised in Journal No.1085 dated 22.8.1994.  The user claim was from 1.10.1983. There was a disclaimer regarding the exclusive use of the letter ‘RL’ ‘CTC’ and other descriptive matters appearing on the label. This is the subject matter of TA/305/2004/TM/KOL.

2.                  Broadly, in all these four matters the Registrar was of the opinion that the user was not proved, that the trade mark consists of the words and colours that are common to the trade and that the mark is not distinctive and also that it is likely to cause deception and confusion. Against this the present appeals have been filed. The Counsel appearing on both sides made elaborate submissions and also filed written arguments.

3.                  The Learned Counsel Shri Kane appearing for the appellants submitted that except for application No.398076 no condition was imposed in other applications and that the appellant is prepared to subject themselves to any such condition, if imposed. According to the Learned Counsel if the appellant shows that the words and the colours to the mark are inherently distinctive or inherently capable of distinguishing their goods or by virtue of user or other circumstances acquire such quality then the mark is entitled to be registered. The learned Counsel submitted that the Registrar ought to have seen if the mark directly refers to the quality. The learned Counsel submitted that there is no evidence to show that there is a variety of tea in India which is known as ‘Red Tea’. The learned Counsel submitted that the Registrar was confused between the question of colour being common to the trade and the words used being ‘Red Label’. According to the Learned Counsel the Registrar also fell in error regarding the concept of ‘common to the trade’ and what is the effect of the disclaimer. The Registrar had totally ignored the monogram ‘RL’ which is a distinctive feature and while considering registration, a mark has to be seen as a whole with all the features therein. The learned Counsel submitted that if the mark was common to the trade then there could be no confusion and if the mark was liable to be confused with another mark then it cannot be common to the trade. The learned Counsel submitted that the fact that the disclaimer was imposed would not automatically mean that the Registrar was satisfied that it was common to the trade. The learned Counsel submitted that the respondents have not produced any evidence to show the mark was ‘common to the trade’. He submitted that no reliance can be placed on the affidavit of Shri Suman Kanji Seth since it does not give any particulars to demonstrate that the mark is common to the trade. He submitted that isolated pockets of use of similar mark cannot prove that the mark is common to the trade. According to the learned Counsel the colour combination of red and yellow with white lettering is uncommon and unique and therefore the mark is inherently distinctive. The learned Counsel also submitted that the appellant has already secured registration of label mark having same colour scheme where the registrations were limited to the said colour scheme and therefore it is clear that the Registrar has accepted the colour scheme to be a distinctive feature of the said trade mark. The learned Counsel submitted that even if evidence is not found sufficient for registration in Part ‘A’ the Registrar could have considered registering the mark in Part ‘B’. The learned Counsel submitted that ‘Red’ is never used as an adjective for tea. The learned Counsel submitted that the burden of proof that the colour red for the words ‘Red Label’ and the colour scheme is common to the trade lies wholly on the respondent. The learned Counsel submitted that unless the opponent proved that he had been using the mark on the relevant date any finding regarding confusion is not justified. Any mark can be said to be confusing or deceptive only in comparison with another mark and when the respondent has not used a similar mark, it will not arise. The learned Counsel submitted that the appellants have succeeded in obtaining many judicial orders against rivals for passing off and this is proof of the proprietary right of the appellant. The learned Counsel submitted that while ‘red’ may describe ‘paint’ no one will use it to describe ‘tea’. There is nothing on record to show that the words ‘Red Label’ have been used to describe the character or quality of tea. According to the learned Counsel the appellants have been using the combination of words ‘red’ and ‘label’ in relation to tea continuously and extensively and in fact had obtained registration of a competitive trade mark containing the words ‘Red Label’ without disclaimer of the words ‘Red Label’. The learned Counsel submitted that the appellant’s case is one where the Registrar should have exercised his discretion in favour of the appellant.
4.         The learned Counsel for the respondents Shri Daruwalla submitted that the onus is always on the applicant to show whether the mark was distinctive or adapted to distinguish and unless he discharges his onus the application is liable to be rejected. According to the learned Counsel the word “Red Label” is descriptive and that is why the Registrar had limited the colour to red. The learned Counsel compared the other labels for which registration has been obtained by the appellant, to show that in all these labels the word ‘Red Label’ is not prominent. He referred to the affidavit filed by Suman Kanji Seth to show that colour combination and the word “Red Label” was common to the trade. The word “Red Label” is not a fanciful word. He submitted that if the question regarding ‘common to the trade’ is answered in favour of the respondent then registration should be denied. He submitted that the disclaimed feature cannot be  essential particular of a trade mark.  He referred to 69 exhibits of various brands of tea which have similar or identical colour scheme. He submitted that Lipton had obtained registration of the mark ‘Red Label’ tea in 1949 and even then there was a disclaimer with regard to the exclusive reach of the words ‘Red Label’ or of a label of ‘red colour’. He submitted that no one has an absolute right to registration and even if a mark is distinctive the Registrar may have valid reasons to refuse registration. He submitted that when the Registrar has considered all the aspects while passing an order, interference shall not be lightly made.

5.         Both the Counsel relied on several decisions which we will deal with later. The evidence filed in all these matters are almost identical. We will be considering in common all the evidence filed so that we do not arrive at a mutually contradictory decision. According to the respondent, the appellant is in the habit of filing different applications for some trade mark with very little reason. Exhibit C-1 to C-69 are photographs of packets of tea having the colour scheme of red or red and yellow in relation to tea. Out of these we find that only C-1 (3 photos), C-13, C-18, C-19, C-20, C-22, C-35, C-39, C-47, C-52, C-57, C-61 have used the colour red, yellow and white in a fairly similar manner as the appellant but the affidavit merely says that C-1 to C-69 are photographs of packets of tea having the colour scheme.  There is no other evidence to the effect that these brands are sold in the market.  The next document is Exhibit D-1 to D-8 to show that in the tea trade using the letters ‘RD’ stands for and means ‘Red’ as a grade of tea. These exhibits are auction notices for sale of tea. Even assuming that ‘Red Dust’ is a variety of tea unless there is evidence to show that tea packed by the appellant in the cartons are in fact ‘Red’ as known in the tea trade, we cannot conclude merely on the basis of D-1 to D-7 that Red Label is descriptive unless there is other evidence.

6.         Vol. 32 2000 IPLR 202 - Shaw Wallace & Company Limited, Plaintiffs Vs. Castle Douglas Industries Limited, Mohan Rocky Spring Water Brewery Limited, Defendants relied on by the appellant is related to the question whether the numbers 2000 in Haywards 2000 would describe the beer. The Bombay High Court held that a connection between the numerals and the potency of the beer or its alcohol content which would be known only to the manufacturer is insufficient to change name, numeral from a fancy numeral into a descriptive one so as to take it out of the realm of exclusiveness. In that case, the learned Judge held that the numeral was a fancy numeral in connection with the beer. Even if we do not accept that ‘Red Label’ is a fanciful name, the fact that  there are varieties of tea called ‘Red Tea’ known to the tea traders alone it is not sufficient to change the words ‘Red Label’ into a descriptive one. An ordinary man may have heard of black tea or green tea but not red tea. ‘Red Tea’ may be known to tea connoisseurs or professional tea traders but not to the man who buys tea from across the counter. D-1 to D-7 do not help the respondent to prove that the mark is descriptive.  Exhibit D-3  shows that the nomenclature ‘RD’ refers to ‘Red Dust’.

7.         Exhibit ‘F’ is the Bombay Tea Traders Association’s letter. According to this letter tea varieties are distinctive from one another by commonly accepted terms like golden, super, red, green and yellow label and that in the industry terms have different brand names and that they are always preceded by the actual brand name whether it is a multi-national corporation or a small retailer. Exhibit ‘F’ gives an illustration of Lipton yellow or green label merely a description of the quality of grade of the tea offered and that the same holds true to Brooke Bond Red Label or Brooke Bond Golden Label. The letter specifically states that normally registration is ordered with disclaimers but that now big companies are trying to back out on the disclaimer and that if the big companies succeed it will sound the death knell to the little businessmen. This letter is addressed to the President of The Federation of All India Tea Traders Association, Siliguri.

8.         Exhibit ‘G’ is the news report in ‘Economic Times’ which refers to the memorandum submitted at the 5th Annual General meeting of the Federation. It refers to Shri Suman Seth, the President of Bombay Tea Traders Association who said that the memorandum was necessary.

9.         Now we will look at the various registrations obtained by the appellant which the appellant strongly relies on to justify the present case. In the affidavit filed by the opponents in rejoinder sent to Harendra S. Shah, Exhibit ‘A1’ to ‘A12’  are the advertisements are referred to. ‘A1’ is application No.84984, the mark is ‘Brooke Bond Tea’ which also contains the word ‘Red Label’ on the side. The registration shows that the applicant will have no right to the exclusive use of the word ‘Red Label’ and registration will be limited to the colour ‘red’. Exhibit ‘A2’ is application No.84985 which is again a mark ‘Brooke Bond Tea’ with the word ‘Red Label’ on the side. The registration is limited as above and with no right to the exclusive use of the word ‘Red Label’. Exhibit ‘A3’ is application No.84991 which is again identical to the earlier mark and in addition to the limitation and condition in the earlier mark it is also made clear that the carton and the red label will be used together.  Exhibit ‘A4’ is application No.247437, this mark is ‘Brooke Bond Tea’ with ‘Red Label’ at the bottom and the registration says that all the labels shall be used together as one trade mark with the same limitation regarding colour and the right to exclusive use of the word ‘Red Label’. Exhibit ‘A5’ is 247438 which is identical to the above and registration granted with the same condition. Exhibit ‘A6’ is 247439 which is identical with the other mark but it is Devanagari character appearing on the device of a coin and the registration shows that no exclusive use is granted to this device. Exhibit ‘A7’ is 247440. Exhibit ‘A8’ is 267935 where the mark is ‘Brooke Bond Tea’ and ‘Red Label’. Exhibit ‘A9’ is application No.268183 where registration is granted subject to the same conditions as above. Exhibit ‘A10’ is 285414 where the mark of the ‘Brooke Bond Tea’ and ‘Red Label’ are almost similar to the previous mark.  Exhibit ‘A11’ is 301186 containing the word ‘Brooke Bond Tea’ and ‘Red Label’ with the same condition as above. Exhibit ‘A13’ is 84985. Exhibit ‘A14’ is 84987. The appellant has marked the certificate of almost all the trade marks which are subject matter of the advertisements in Exhibit ‘A1’ to ‘A14’.

10.       These labels tell an interesting tale of the manner in which the appellant has used ‘Red Label’. In Exhibit ‘A1’ the red sign had bold white letters of Brooke Bond Tea. On the adjacent side of the carton in small letters the word ‘Red Label’ is found. This is in 1946. In ‘A4’ which is in 1968, ‘Brooke Bond’ and ‘Red Label’ are found on the same side of the carton but ‘Brooke Bond Tea’ is in bold letters. ‘Red label’ is found beneath in a smaller font. In Exhibit ‘A5’ in addition to this we find the inscription on the side “always order Brooke Bond Tea BY NAME”.  Therefore the appellant is admittedly identified by the word “Brooke Bond’. In Exhibit ‘A8’ which is of the year 1971, the size of the words ‘Red Label’ has increased but they are still found beneath the words ‘Brooke Bond Tea’. Now we have the present application where in the place of ‘Brooke Bond’ in the earliest application, we find the words ‘Red Label’ tea and where the words ‘Red Label’ was found in exhibit ‘A1’, now words ‘Brooke Bond’ is found.  What started with the dog wagging the tail has ended with the tail wagging the dog.

11.       In the opposition filed to 397359, Shri Suman Seth has filed an affidavit dated 17.1.1998. He is the partner in a company carrying on business in sale of tea. He was the President of the Bombay Tea Traders Association between 1992 to 1994. At the time of the affidavit, he was the Committee Member. He has averred that he has been in the tea business for 41 years and according to him ‘golden’ ‘super’, ‘red’ are descriptive or laudatory and as example he has given Lipton yellow label or Green Label and Brooke Bond label. He has stated that the colour red and the colour combination of red and yellow is common to the trade.  According to him tea manufacturers use ‘Red Dust’ to grade their tea. He had marked a memorandum filed in the 5th Annual General meeting where the traders passed a resolution that no trader or manufacturer should claim monopoly in the words like ‘golden’ ‘super’, ‘red’, ‘green’ tea.

12.       In support of the application for registration one Shri M.K. Sharma who is the Director (Legal) of Hindustan Lever had filed an affidavit. He referred to the certificates 84984, 85002, 219477, 247437, 247438 and 284910. He has admitted that the registration was granted subject to limitation. He has stated that with prejudice or without admitting, the company has claimed no monopoly to use the word ‘Red Label’, it definitely has exclusive right to use a distinctive colour or colour scheme. According to him the appellant was the first to use the Red Colour since 1903 and that “certain conditions has been imposed and agreed upon in past erroneously just for the purpose of obtaining/granting the registration”.

13.       We express our disapproval of the appellant’s conduct as spoken by this witness. If registration is granted subject to conditions and the registration has been accepted with conditions we do not think the proprietor of the mark can say that these were agreed upon erroneously for the purpose of obtaining registration. That indicates subversion of the registration proceeding which is  quasi-judicial. Does it mean that the conditions were agreed to only to obtain registration, and the conditions will not bind them otherwise. We cannot allow any party to make such a submission.

14.       According to Shri Sharma, the appellant is the proprietor of the mark ‘Red Label’ and due to open, continuous use the mark has acquired distinctiveness and that there is no red or green or yellow colour tea and that some tea brokers may have mentioned the word “red tea” but it cannot be accepted as descriptive. Sales figures have been given for the sale of goods sold under the mark ‘Red Label’ since 1980. According to him, already in the various marks mentioned they had obtained proprietorship over the words ‘Red Label’. This application is a mere extension to secure new registration. According to him people from all walks of life identify the trade mark ‘Red Label’, and the resolution of the Bombay Tea Traders Association is by vested interests for their self gain. According to him, on boiling tea will produce only brown colour and not red.

15.       The appellants have obtained several injunction orders restraining the opposite parties from using the red and yellow colour scheme. Before us, the appellants have produced affidavits filed by several persons to say that they have been selling or using Brooke Bond Red Label Tea or Red Label Tea and that the words are exclusively associated with Hindustan Lever Limited or Brooke Bond Company and that they are well known in the market. Some of them have even said that they have not come across any other Red Label Tea. These affidavits are some what repetitive but even if we take it that it refers to a section of the tea drinking public we are not sure that alone would be sufficient to establish distinctiveness. These affidavits have been sworn to in 2004; they are post opposition proceedings evidence and do not have much strength.

16.       There is absolutely no evidence of user by the appellant from the date as claimed in the trade mark application. The proof of user if there is one is a Chartered Accountant certificate issued by Price Waterhouse showing year-wise exports of ‘Red Label’ packet tea to countries including Afghanistan. It shows sales from 1975-76. There is another certificate/reference to sale of tea bearing the name Brooke Bond Red Label/Red Label. These are not accompanied by the affidavit of the person issuing the certificate. When evidence is marked without the witness getting into the box and evidence is given on oath, it can be received as evidence only if it is proved by affidavit. The fact that the Chartered Accountant is a firm of great repute cannot make it admissible without a person marking it before us as evidence. The other document that is relied on by the appellant are the approval of tea bags brand name which refers to the brand name ‘Red Label’. These certificates are of the year 23.2.1979, 4.12.1981 and 6.12.1983. Therefore, they are almost around the same time as the date of application. ‘Red Label’ is not a distinctive mark.

17.       According to the appellant, the trade marks can be categorized as inherently distinctive or non-inherently distinctive marks or marks which do not possess distinctiveness at all. According to the learned Counsel for the appellant ‘Red Label’ falls into inherently distinctive mark since it has no connection with tea and therefore it will fall under the first category and that the registration had been erroneously withheld on the ground the said words are directly descriptive of the quality of the goods.

18.       The appellants had obtained registration of several marks containing the words ‘Red Label’ but they were adopted along with the word ‘Brooke Bond’.  Therefore we cannot compare the mark ‘Brooke Bond Red Label’ to be equal in strength to a mark which merely says ‘Red Label’. We find that there are several marks which use the word ‘Red’ like Red Roses, Red Cup, Red Dust etc. There are also several marks which use the word “label” as “yellow label” or “Green label”. In fact, Lipton had a registration of “Red Label”. The affidavit of Shri Suman Seth also shows that the words “Red” along with “Label” or “Green” along with “label” are used by the traders and if monopoly is granted, the word ‘Red Label’ per se it would result in destroying the business of small traders. Though the learned Counsel for the appellant submitted that this was something that took place in Siliguri, Assam we do not think we can minimize the importance of this statement. This was a memorandum submitted at the 5th Annual General meeting of the tea traders. Therefore this evidence is enough for us to conclude that the words ‘Red Label’ are common to the tea trade.

19.       We are not accepting the case of the respondent that the word ‘Red’ describes tea. However, the evidence shows that tea traders have a fancy for names like “yellow label”, “green label”, “red label” and even “white label”. We are reinforced in our view because in all the registrations that have been granted to the appellant a specific condition is imposed that the appellants will not claim exclusivity to this word; that can only be because the Registrar felt that if  registration is granted without condition, the appellant might take action against others for using common words like ‘Red Label’ and for using the colour ‘Red’ which are inherently non-descriptive and also used commonly in the tea trade. The appellant had accepted the condition without demur. We have already referred to the series of registrations where such conditions have been applied. In one instance no disclaimer or condition has been imposed, but that cannot change the consistent view of the Registrar which is also the correct view.

20.       The Counsel for the appellants submitted that when assessing distinctiveness the Registrar ought to have seen the whole mark which contains the word ‘Red Label’ along with the colours, the Arabic word and the monogram and should not have separated the word ‘Red Label’. Then the user of the mark ‘Red Label’ all along had been in conjunction with the word ‘Brooke Bond’ which is the whole mark and not ‘Red Label’ per se. So, if the appellant claims that the mark has obtained strength by long use, that mark would comprise of the words ‘Brooke Bond’ and ‘Red Label’ on the same side of the carton. In the case of the earlier mark ‘Brooke Bond’ was on the main side and ‘Red Label’ in smaller font on the side and the appellant now claims on the basis of these registrations that ‘Red Label’ alone has acquired the distinctiveness. We cannot accept it.

21.       The appellant also cannot be heard to say that these conditions were erroneously accepted. They are not small traders. They are companies which are known internationally and they are fully aware of the consequences of every order passed by the Registrar. In fact we are surprised why the appellant should repeatedly apply for registration of marks which are barely different from one another. There must be some reason, only we are unable to read it. They are legally well advised companies which cannot be heard to say that they innocently and erroneously accepted the conditions which were imposed. Therefore if this mark had been used continuously that mark was ‘Brooke Bond’ and ‘Red Label’ together. We find no evidence of user of the mark “Red Label” per se for that period of time to acquire distinctiveness. We are satisfied that the words are common to the tea trade. We are not convinced that this is descriptive but it is definitely not distinctive.

22.       Decisions relied upon by the appellants:

(i)         AIR 1960 SC 142 – Corn Products Refining Co., Appellants v. Shangrila Food Products Ltd., Respondents: The Supreme Court held that before an applicant can derive assistance for the success of his application, he has to prove that the mark had acquired a reputation by user in the market and any such use must be established by evidence.

(ii)        AIR 1989 PTC 289 – The Anglo-French Drug Co. (Eastern) Ltd., Petitioner v. Hony-N-Bois and Another, Respondent: It was stated that the word “HEPASYP” would convey an obvious meaning in the ordinary English meaning. 

It was relied on to say that ‘Red Label’ does not lead to such obvious connection with tea but in the same case there is reference of necessity to prove user.

(iii)       1994 IPLR 1 – Schering Corporation & Others, Plaintiff v. Kilitch Co. (Pharma) Pvt. Ltd., Defendant: The question was the similarity between QUADRIDERM and CORIDERM which is not relevant to the case.

(iv)       2004 (28) PTC 193 (Bom) – Pidilite Industries Ltd., Plaintiff Vs. S.M. Associates & Ors., Defendants: This was relied on by the appellant to show whether there was confusion arising between the two marks “M-Seal” and “S M-Seal”. 
In the present case the respondent did not press his case so much on the confusion between his mark and the appellants mark. In fact, the respondents did not labour too much of proving their user; it is their case that ‘Red Label’ was common to the trade, it is non-descriptive and therefore cannot be registered. Therefore all the decisions where two marks are compared and a conclusion either on similarity or identity are really not relevant on the facts of this case.

(v)        2003 (27) PTC 580 (DB) (Bom) – R.R. Oomerbhoy Pvt. Ltd., Appellant Vs. Court Receiver, High Court, Bombay and Another, Respondents: In this judgment the question was whether the word “POST” has become common to the trade before the Division Bench, High Court, Bombay. In this case there was no evidence regarding the market share of products which use the word “POST”, the extent of the sales and whether these products are sold in the very areas in which the products of the partnership firm were being marketed etc. 

It is not necessary that identical evidence should be provided in every case. If there is a piece of evidence which shows that the words ‘Red Label’ along with the colours like ‘red’, ‘yellow’ or ‘green’ or the word ‘Red’ along with words ‘label’, ‘dust’ is prevalently used in the market that would be sufficient reason to arrive at a decision.

(vi)       1946 RPC Vol.LXIII page 59 – In the matter of an application by Ladislas Jelliner:  It was the case where there was opposition by makers of shoe with the mark “Panda” to registration of the mark “Panda” for shoe polish.

In this case there is a specific finding that the opponents “Panda” footwear had not been recognized by the public by 1941 and therefore no confusion was really to arise.  So the decision is on the particular facts of the case.

(vii)      1977 IPLR Vol I 83 – Mohan Goldwater Breweries (Private) Limited, Applicants vs. Khoday Distilleries Private Limited & Another, Respondents: This is a case where the Court held that Section 11 objection must be determined with reference to the date of application and evidence of user by the applicant after the date of application was of no use. The Madras High Court further stated that for the purpose of registration the rights of the party must be determined as on the date of the application.

(viii)      (2008) 17 SCC 491 – Bachhaj Nahar, Appellant Vs. Nilima Mandal and Another, Respondents: This relates to the question whether evidence from the Brooke Bond tea can be looked into in the absence of pleading. There could be no quarrel with this proposition. 

(ix)       (2008) 8 SCC 92 – State Bank of India and Others, Appellants Vs. S.N. Goyal, Respondent: This is also regarding the effect of absence of pleading.

(x)        (32) 2007 IPLR 202 – Shaw Wallace & Company Limited, Plaintiffs Vs. Castle Douglas Industries Limited, Mohan Rocky Spring Water Brewery Limited, Defendants:  We have referred to this case. This relates to a question whether the numeral 2000 can be used by the defendants in the Beer. Plaintiffs who are marketing beer in the marks “HAYWARDS 5000”, “HAYWARDS DIET” etc. and registration has been granted with a disclaimer of the word “2000”.  The defendants mark was “Castle 2000”. The defendants reinstated the claim that “2000” describes the strength of the beer. In this connection the Learned Judge held that if there was an arcane connection between the number and the potency of the beer which is known only to the manufacturer it would not change the number into a descriptive mark. Injunction was granted in favour of the plaintiffs.
In the present case the respondents had endeavoured to show by the auction notices that ‘Red’ is a variety of tea. There is no evidence to show that the ordinary man will recognize connection between a word ‘red’ and ‘variety of tea’. Perhaps the tea traders know the connection. This is not enough.

(xi)       AIR 1963 122 – A.R. Khaleel and Sons, Appellant v. Registrar of Trade Marks in India, Bombay, Respondent: The Division Bench held that though “Speedmaster” was not an invented word it is a combination of two words but since it has no direct reference to the goods namely, clocks, time-pieces and watches, the said mark is eligible for registration.

This was relied on by the appellant to show that even if ‘Red Label’ is just a combination of few words, since it has no connection with tea they are entitled to have the mark registered.

(xii)      Judgment in Appeal No.47 of 1975 – The Registrar of Trade Marks, Bombay, Appellant Vs. Popatlal Punjabhai Mistry, Babulal Shivlalbhai Mistry, Thakurbhai Punjabhai Mistry, Respondents: This is related to mark “SCIENTIFIC” in connection with clock. That the requirement for registration in Part ‘B’ of the Register ought/ought not to be allowed in this case as there was a duty to strike a proper balance between the rights of the individual who was claiming a monopoly in the use of the word and the rights of the community particularly the trading community. They referred to the development of secondary meaning in certain cases which outweighs the apparently non descriptive character of the mark when viewed in isolation.

According to the learned Counsel for the appellant, this applies to the case and they had developed a secondary meaning.

(xiii)      AIR 1972 Delhi 46 – Mohd. Rafiq and another, Appellants v. Modi Sugar Mills Ltd., Respondent:  In this the word was “SUN” and it was sought to be registered in relation to the goods ‘lamp’. In that case, the registered proprietor relies on the protection of Section 32, that is, seven years have passed from the date of registration. The persons opposing the registration claimed that they can claim under Section 32(c).  On facts, the Hon’ble Delhi High Court rejected the claim.

(xiv)     1980 Vol V IPLR 1 – Central Camera Co. Private Limited v. The Registrar of Trade Marks: It was the case where the question was whether the Registrar can refuse registration on the basis of objection.  The matter was remitted to the Registrar with the direction to advertise. This does not apply.

(xv)      1998 PTC (18) 526 – V.K. Industries, Petitioner Vs. V.H. Mehta, Respondents:  In this case the mark was “PLATINUM” in respect of yarn threads. It was held that a common man is not likely to associate this word with the product and direct reference was necessary to construe an expression “adapted to distinguish” and “capable of distinguishing”. In regard to the legislative history of the Act, the English Act of 1938, it says that there would be no bar to use of common words of the English language if they qualify under any of the clauses (a) to (d) of sub-section (1) of Section 9 and that the limitation is only confined to words which are either descriptive or laudatory. The Court held that the actual user of the mark is not a necessary condition for distinctiveness or its capability to distinctiveness even though it could be considered in determining the distinctiveness or the capability of a mark to distinguish.

(xvi)     1992 (60) E.L.T. 88 (Guj.) – Brooke Bond India Ltd. Vs. Union of India: This was relied on because there was an observation which arose under the Central Excise Tariff Act of 1985 that tea is blended and sold in the market under different names such as Red Label, Red Special, Tajmahal etc.

(xvii)     1976 RPC 511 – Smith, Kline and French Laboratories Ltd. v. Sterling-Winthrop Group Ltd. – In this judgment the House of Lords said that the trade mark law does not require a mark to be two dimensional. 
This was relied on by the appellant to show that if the size of the carton are taken as a whole then the mark is descriptive. We have already described how the position and size of ‘Red Label’ in the carton has gradually undergone a change. We had in fact considered the entire carton as a whole. We have also taken into account the prevalency and use of words ‘Red Label’ and the colour ‘Red ‘ by the tea traders.

(xviii)    1987 RPC 13 – Unilever Ltd.’s (Striped Toothpaste No.2) Trade Marks: This relates to a Chinese toothpaste marketed by Unilever Ltd. The brand name is SIGNAL and the opposition was by Colgate Palmolive. It is not in favour of the appellant in which it was held that while answering the question that red and white are distinctive of Unilever goods the question was answered that it is not descriptive but at the same time the judgment held that the maker’s published mark is such that “I see no prospect of there being a time when it would not be legitimate for other traders to wish to use them….”. Therefore he felt it was not “capable of distinguishing” and the mark does not qualify for registration in Part B either.
(xix)     1988 RPC 530 – Pound Puppies Trade Mark: The Board of Trade held that for a mark to be registrable it must be capable of distinguishing the proprietors’ goods from others and if the mark has in fact become distinctive then it is likely to have had a capacity to distinguish. In that case the mark had been extensively used and products sold under the mark have been a great commercial success.  The Board of Trade held that therefore the mark was capable of distinguishing the goods. 

Here we are not satisfied with the evidence regarding distinctiveness.

(xx)            1977 RPC 473 – Blue Paraffin Trade Mark: The matter relates to mark relating to Blue Paraffin. The question was whether it was descriptive or inherently adapted to distinguish. The mark was opposed. In that case the opponents themselves has conceded that the word ‘blue’ has come to be associated with the company’s product to a considerable extent. In that case on facts, the Court held that the words ‘blue paraffin’ had an inherent attitude to distinguish the paraffin of Esso companies. In that case, paraffin traders coloured their paraffin and dyed their paraffin blue but there was no evidence in that case. The paraffin traders used the word ‘blue’ as part of their mark.

(xxi)     1977 IPLR 57 – The Anglo Thai Corporation Ltd., Petitioner Vs. Mahendra Kumar Maneklal Shah & Other, Respondents: This was with regard to trade mark “GRIPE WATER”. Though the words ‘Gripe Water’ was similar it was held that the device of the petitioner was sufficiently different and therefore registration was allowed.

In Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., A.I.R. 1955 Supreme Court 558, at page 563, it was observed as under:

“…the avowed purpose of the Section (Section 13 which is equivalent to the present Section 17 requiring a disclaimer) is not to confer any direct benefit on the rival traders of the general public but to define the rights of the proprietor under the registration.
“…The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimize, even if it cannot wholly eliminate, the possibility of extravagant and unauthorized claims being made on the score of registration of the trade marks.
“…That proviso (proviso to section 13) preserves intact any right which the proprietor may otherwise under any other law have in relation to the mark or any part thereof.”

(xxii)     Central Excise & Salt Act, 1944 Tariff Item 3(2) was also produced to show that while there was reference to black tea and green tea there was no tea called ‘red tea’. In the Tea lexicon we find that in China the tea is grouped in red, green and white etc. The Chinese grading is not relevant to us.

23.       Now, we come to the judgments cited by the respondents: 

(i)                  The respondents mainly quoted the word ‘perfection’ which reads  as follows:
In (1909) 26 RPC 837 at 861 – Joseph Crosfield & Sons Ltd’s Application: “The purity of the Register of Trade Marks is of much importance to trade in general, quite apart from the merits or demerits of particular litigants, and it is the duty of the tribunal to see that no word not ‘adapted to distinguish’ shall be put on the register in the interest of other traders, wholesale and retail, and of the public. If this were not so, the large and wealthy firms with whom the smaller folk are unwilling to litigate, could by a system of log-rolling…divided amongst themselves all the ordinary words of description and laudation in the English language…”
(ii)        RPC 1889 (6) 165 – The Great Tower Street Tea Co. v. Smith:  The mark was ‘Tower Tea’. The registration was not granted on the ground that a number of firms using the word “Tower” as part of their designation.

The learned Counsel relied on all the decisions in ‘perfection’ case granted by the Court of Appeal and the House of Lords. 

(iii)       (1910) 27 RPC 453 – In the matter of an application by Leopold Cassella & Co. to register a trade mark:  This is related to the trade mark “Diamine”.

(iv)       (1913) RPC Vol.XXX 660 – In the matter of applications by W. and G. DU CROS LD. For the registration of trade marks: This is related to the applications for registration of the letters ‘W’ and ‘G’. It was held that a trader’s initials are ‘W’ and ‘G’ upon his goods but that giving exclusive propriety of this mark to one person is possible impairment of the rights of innocent traders.

(v)        (1916) RPC Vol XXXIII 117 – In the matter of Garrett’s applications to register a trade mark: The mark was “Ogee”. The conclusion of the Registrar that confusion might arise was upheld.

(vI)       (1953) RPC Vol LXXI 150 – Yorkshire Copper Works Limited’s application for a trade mark:  The mark was “Yorkshire”. The House of Lords said that if the mark was distinguished or not inherently adapted to distinguish, applications should be refused. In that case it was observed that more a word is descriptive the less it is difficult to distinguish from others.

In this case we have not accepted that it is descriptive though non descriptive.

(vii)      RPC 1967 306 – “Heavenly” Trade Mark:  The registration of the mark ‘Heavenly’ with regard to goods in Class 3 was refused, since it was held that it had a laudatory connotation.

(viii)      1988 RPC 272 – Superwound Trade Mark: The word mark  “superwound” for registration was refused.

(ix)       (2006) ISCC 368 – Union of India (UOI) and Anr., Appellants Vs. Major Bahadur Singh, Respondents: This was relied on as each case depends on its own facts and precedent should be followed only so far as it marks the path of justice.

(x)        A.I.R. 1955 SC 558 – Registrar of Trade Marks, Appellant v. Ashok Chandra Rakhit Ltd., Respondent which is the same as the case relating to the word “Shree”.

24.       We have given our reasons above why we cannot allow the marks in question to proceed to registration.

25.       To summarise –

(a)        The words are common to the trade as proved by the respondents’ evidence;
            (b)        The user of the mark has not been proved, the appellant’s user is for “Brooke Bond Red Label” and not “Red Label” as a stand alone mark;
(c)        The metamorphosis of the original mark where “Brooke Bond” was prominent to the present one where “Brooke Bond” is cast to the sidelines is a factor against the appellant; the fact that in trade mark application 453651 there is the monogram ‘RL’ does not make a difference. ‘RL’ is not prominent and the impression one gets as a whole is only of the words “Red Label”.
            (d)        The mark “Red Label” is not distinctive;
            (e)        The earlier registrations had conditions imposed that there shall be no exclusivity to the words “Red Label”. In spite of that for reasons best known to the appellant, repeated applications are filed.

26.       In the result, the appeals are dismissed with costs of Rs.10,000/- each.  All Miscellaneous Petitions closed.

(S. Usha)                                                                               (Justice Prabha Sridevan)
Vice-Chairman                                                                                    Chairman