(1) Both these petitions are directed a ageinst an order of Assistant Registrar of Trade Marks partly allowing the application for registration of Trade Mark consisting of word "Shankar" in class 7 in respect of the specification "Sugarcane Crusher" only and dismissing in respect of "Centrifugal Sugar Machines and Persian Wheels".
(2) This matter has a chequered history. The registration was applied for on 9th June, 1960 by a partnership-frim, running its business under the name and style Meerut Engineering Works. This firm was comprised of Shankar Lal Garg, Madan Lal Garg and Brij Mohan Garg. The firm was manufacturing sugarcane crushers, centrifugal sugar machines and persian wheels. Trade Mark Shankar was sought to be registered in respect of these three products. The user of this Trade Mark is being claimed by the petitioner since 1955. The applications advertised in Trade Mark Journal No. 285 dated 16th April, 1961. On 1st November, 1961 the partnership-firm was dissolved. The relevant terms of the Dissolution Deed are reproduced as under:
(I)The firm shall be deemed to have been disowned to day on 1.11.1961.
(II)That the party No. 2. Shri Brij Mohan Lal has agreed to take the goodwill of this firm on a payment of Rs. 7.500.00 to party No. 1 and Rs. ll,250.00 to party No. 3.
(III)That the firm has got quota rights of Raw Material and Fuel from the Iron Control Authorities and the Director of Industries etc. It has also Iron Import Licence rights from the Import Control Authorities. The firm is manufacturing Crushers under the Mark "SHANKAR CRUSHER", which is still an unregistered trade mark. It is agreed that all these rights and the Unregistered Trade Mark shall form a part of the goodwill which will also include the rights of Electric Power Connection.
(IV)The stocks in hand, machinery, tools, patterns, maps and literature shall be distributed half and half by the parties No. 1 and 3. The value thereof will be debited to their respective capital accounts.
(V)That the Debtors and Creditors will be taken over by the parties No. 2 and 3 'at their options such accounts which are not taken over by any party will be paid or realised jointly with the joint responsibilities of all the three parties.
(VII)The account books of the firm shall remain in the custody of party No. 2, who is the owner of the Goodwill. The other party shall have a right of inspection and of having copies of accounts therefrom according to their requirements. xxx xxx xxx (X)That the party No. 3 Shri Madan Mohan Lal Garg shall not use the word Shankar immediately before or after the word "Crusher" for his personal business. But he shall be at liberty and entitled to use the word "Shankar" in any other way he may like, such as Shankar Iron Industries, Shankar Engineering Works etc. etc."
(3) Madan Mohan Lal Garg, one of the partners of the said dissolved firm on 18th September, 1962 opposed the request of registration of the Trade Mark on the ground that the word "Shankar" being a personal name as well as surname, is not registrable except upon evidence of distinctiveness. Accordingly, a notice was sent. The objection was found to be time barred and was rejected. Madan Mohan Lal Garg filed a suit which was allowed by a Single Judge of this Court on 26th May, 1971 and the matter was directed to be remanded back to the Registrar to give appropriate hearing to Madan Mohan Lal Garg. The matter was heard on 10th November, 1971. An interlocutory application was moved. That was rejected as Section 44(1) was found not applicable to the interlocutory applications and the parties were directed to lead evidence. This order was challenged before the High Court in Fao I /72 and it was dismissed by a Single Judge of this Court. Thereafter, an Lpa was filed. Since the application under Section 44(1) of the Act was not competent and that Section 12(2) had no application in the matter of this kind, Lpa was also dismissed.
(4) On 7th September, 1972, Madan Mohan Lal Garg made another interlocutory petition seeking following reliefs :
1.The original application could not be maintained for registration since it violates the clear terms of agreement. The present application may either be treated as withdrawn or refused by the learned Assistant Registrar of Trade Marks.
2.The fresh application by Shri Brij Mohan Lal may be moved with the word 'Shanker Crusher' or Crusher Shanker in respect of Crusher, as mutually agreed and the petitioner shall have no objection for the same.
3.It is, therefore, requested that Mr. Brij Mohan Lal may be directed to produce original Dissolution Deed and the case may be disposed of in the light of clear terms of agreement."
(5) In terms of the directions issued by Hon'ble Mr. Justice V.D. Mishra, the terms of the Dissolution Deed were required to be considered.
(6) The learned Assistant Registrar took the view that the purpose of the Dissolution Deed was to transfer the unregistered trademark "Shankar Crushers" together with the goodwill of the business of the firm to Brij Mohan Lal Garg in view of payment of Rs. 7,500.00 to Shankar Lal Garg and Rs. 11,250.00 to Madan Mohan Lal Garg. There was no material on record to arrive at the conclusion that the applicants were trading in other goods like Centrifugal Sugar Machines and Persian Wheels etc. under the trade mark "Shankar". Consequently, Brij Mohan Lal Garg had acquired the trade mark "Shankar" but for the use in respect of crushers alone together with the goodwill of the business. On the basis of this finding, the Assistant Registrar directed amendment in Form Tm 16 and to register the Trade Mark "Shankar" in the name of Brij MohanLal Garg trading as Meerut Engineering Works, Meerut Road, Up, subject to the condition that his rights were limited to trade in crushers under the mark in question.
(7) Feeling aggrieved by the said order, the present Petition No. 34 of 1976 under Article 227 has been filed by Brij Mohan Lal Garg on the ground that the Assistant Registrar has not correctly read the Deed of Dissolution and on the facts of the case, the Assistant Registrar should have held that the appellant was entitled to registration of Trade Mark for all the three items applied for under Application No. 196401. Accordingly, the application should not have been ordered to be amended and confined to the prayer only to Sugarcane Crushers.
(8) Shankar Lal Garg expired during the pendency of the matter on 9th April, 1964 and his two other sons Mahesh Chand Garg and Yogesh Chand Garg have been ordered to be brought on record vide order dated 12th April, 1979 in Cm 808/78.
(9) None appeared in this matter from the side of Brij Mohan Lal, petitioner in CM(M) 34/76 and respondents in CM(M) 235/75 despite the fact that the matter is being listed since 2nd January, 1977 daily in the Regular list alongwith the name of the Counsel. Since none has appeared and the matter has been pending now for over 20 years, I, was not inclined to keep this matter pending any further. Accordingly, I proceeded to hear Counsel appearing from the side of Madan Mohan Lal Garg, respondent in GM(M) 34/76 and petitioner in CM(M) 235/75.
(10) First question which needs consideration is whether the Assistant Registrar has rightly interpreted clauses of Dissolution Deed. Seeing the Clauses 1,3 and 10 of the Dissolution Deed, it is apparent that while the goodwill of the firm as well as quota relating to raw materials, fuel from the Iron Control Authorities and Director of Industries and Iron Import Licence would remain with Brij Mohan Lal Garg. Clause 3 did not disclose anything further to include business of Centrifugal Sugarcane Machines and Persian Wheels for which the trade mark was also applied for apart from "Sugarcane Crushers". Seeing the material on record and lack of evidence relating to established business user of Trade Mark in respect of Centrifugal Sugarcane Machines and Persian Wheels, it could not be registered as prayed for, by Brij Mohan Lal. Since it was not disputed that "Sugarcane Crusher" business was being run since 1955, with the trade name of "Shankar", it could be registered for the said business, it has acquired distinctiveness, in terms of Sub-section (2) of Section 9 of the Act. "Shankar" being personal name, could be registered as part of Trade Mark only in terms of Section 9(l)(a)(d). It reads as under :
(11) Requisites for registration in part A and B of the Register:-(1) A trade mark 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) xxx (e) xxx (d) one or more words, having no direct reference to the character or quality of the goods, and not being according to ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect or caste or tribe in India; (e) xxx (12) Under Section 9(1) in Part A of the Register for registration of personal name, it is essential in terms of Clause (a) that it is represented in a special or particular manner. Clause (d) of Section 9(1) does not refer to names of individuals but to one or more words, not being according to its ordinary signification, a personal name. Section 9(2) refers to a "name signature" and not to personal name or name of an individual and it uses phrase "other than such as fall within the descriptions, in Clauses (a), (b), (e) and (d) of Sub-section (1) "to exclude name(s) of any individual. Consequently, any individual's name for registration as Trade Mark or part thereof has to be represented in special or particular manner. There may not appear any difference for practical purposes between a name of an individual "represented in a special or particular manner", and registrable "name signature". According to Black's Law Dictionary 6th Edition "name" means a word or combination of words used to distinguish person or thing or class from others" and the term "signature" means in commercial law, "any name, word, mark used with the intention to authenticate a writing constitutes a signature". In the present context, "name signature'' mark may be used to authenticate not a writing but a particular item of product to assure the customer that it is product of the producer of his choice, and not of any other person. The subtle difference between the two is that one is "represented in a special or particular manner" and the other has acquired 'distinctiveness" in terms of Sub-section (3) of Section 9, and is possible to acquire such a distinctiveness by prolonged user for in that case a name signature or word has already been adapted to distinguish goods with which the proprietor of the trade mark is connected, or may be connected in the course of trade, from the goods of others in the case of which no such connection subsists. The purpose of these provisions, being to distinguish goods of one from the goods of others, it is certainly permissible and desirable to recognise prolonged user of an individual name in trade marks, provided there is no chance of any other person using the same name for the same item of the same class of goods. Since in the instant case there appears prolonged user of name "Shankar" with sugarcane crusher since 1955 and there is no evidence that anybody else is using it as a part of trade mark for sugarcane crusher, its name could be registered. In this light, the order of learned Assistant Registrar appears to be absolutely justified, specially in view of application of Madan Mohan Lal Garg dated 17th September, 1972 referred to in para 4 and the fact that the matter has been decided in terms of the Dissolution Deed.
(13) As referred to earlier, the expression "distinctive in relation to the goods in relation to which the trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of the trade mark is connected in the course of trade in 'terms of Sub-section (3) of Section 9 from the goods of others. Distinctiveness is required to be established in respect of other two items. In the absence of any evidence of prolonged user, it could not be said that the word "Shankar" had acquired distinctiveness in respect of "Centrifugal Sugarcane Machines and Persian Wheels". Consequently, it is not possible to accept the contentions raised by Brij Mohan Lal Garg in his CM(M) 34/76.
(14) On the other hand, Shri Madan Mohan Lal Garg has also filed Petition No. 273/1975 praying for setting aside the afore-mentioned order, allowing registration of Trade Mark "Shankar" in respect of "Sugarcane Crushers". His claim cannot be -. accepted in view of what has been observed above. Besides, in view of his application dated 17th September, 1972 and the fact that the matter has been disposed of by the Assistant Registrar in terms of Dissolution Deed, Mr. Manmohan Singh, Advocate just prayed for clarification in terms of Clause 10 of the Dissolution Deed dated 1st November, 1961. Though there is no need, yet it is clarified that Madan Mohan Lal Garg will not use word "Shankar" immediately before or after the word "Crusher" for his personal business but he shall be at liberty to use words "Shankar Iron Industries" and "Shankar Engineering Works" etc. With the above clarification, CM(M) 34/76 as well as CM(M) 273/75 both are dismissed. Parties are left to bear their own costs.
(15) A copy of this order be placed on the file of CM(M) 34/76 for record and another copy of this order be sent to Assistant Registrar of Trade Marks for information and record.