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       REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

                    CIVIL APPEAL NO. 2138 OF 2006

Lal Babu Priyadarshi           .... Appellant(s)

Versus

Amritpal Singh                                        .... Respondent(s)

J U D G M E N T

R.K. Agrawal, J.

1) The  present  appeal  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 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:

(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  

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incense sticks (agarbattis, dhoops) and perfumeries etc.   

(b) One Shri Amritpal Singh-the respondent herein, was a dealer for  

the sale of the products of the appellant herein and was also trading  

as M/s Badshah Industries, Chitkohra, Punjabi 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1958 [repealed by the Trade Marks Act, 1999 (47 of 1999)-in short  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’]  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 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.  

(d) Being aggrieved by the order dated 31.03.2004, the respondent  

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,  passed  by  the  Assistant  Registrar  of  

Trade Marks.

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(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 appellant  

and Mr. Sudhir Chandra, learned senior counsel for the respondent.

4) The sole question for consideration before this Court 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:

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 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 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  

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dealers and distributors and the respondent herein 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.      

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 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 registrable  

under the Act.  She further claimed that it has already 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 the respondent.    According to the learned counsel, the Board,  

totally misconstrued the observations of the Standing Committee in  

the  Eighth  Report  on  the  Trade  Marks  Bill,  1993.   Relying  upon  

Clause 13.3 of the said report, it was submitted that even though the  

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Committee had observed that “any symbol relating to religious gods,  

goddesses, places of worship should not ordinarily be registered 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 Rakhit AIR 1955 SC 558 by proceeding on the  

basis that the 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 ‘SHREE’ was incapable of distinguishing 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  

‘SHREE’ but this is not so with the word “RAMAYAN”.   

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 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  

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the names of Hindu deities as trade mark is a common practice and  

no  one  has  complained  about  the  same  being  sensitive  to  Hindu  

religious sentiments for which reliance was placed on a decision of  

this Court in  K.R. Chinna Krishna Chettiar vs.  Sri Ambal & 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 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.  

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 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 distinctive mark and is devoid of  

any distinctive character.  The mark is not capable of distinguishing  

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the goods of one person from those of another.  It was also contended  

that the mark “RAMAYAN” is not registrable since it is the name of a  

famous and well known religious book.  It was also claimed that more  

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 Bell Co. vs.  Metal Goods Mfg. Co. (P) Ltd. and Another  

1970 (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 deceived.  Learned senior counsel finally claimed  

that the Board 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.  

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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 device of crown in respect  

of  incense sticks (agarbatties)  and perfumeries  etc.   The appellant  

herein claimed the user since 01.01.1987.  He further filed 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 registration of the trade mark, the respondent herein filed  

a notice of opposition under Sections 9, 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 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 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,  it  was  

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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, the Board set aside the  

said  order  after  holding  that  the  trade  mark  “RAMAYAN”  is  not  

distinctive of the goods of the appellant as it is being used as a mark  

for  the  same  products  by  more  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:-

“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  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 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  exclusively  of  marks  or  indications  which  have become customary in the current 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 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  

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mark.  

(2) A mark shall not be registered as a trade mark if –  

(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 class or section of the citizens  of India;

(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 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 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 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.”  

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, 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  

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language or in the bona fide and established practice of  the trade  

shall not 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  hurt  the  religious  

susceptibilities, (iii) it contains scandalous or obscene matter, (iv) its  

use  is  prohibited.  It  further  provides  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 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  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  

complaints  that  a  particular  trade  mark  is  hurting  his  religious  

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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 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 be a religious book of  the  

Hindus  in  our  country.   Thus,  using  exclusive  name  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 “RAMAYAN” may lose its  significance  as a religious  

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 mark. We also find  

that in the photographs, after adding “OM’s” to the word “RAMAYAN”,  

at the 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, we find  

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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.    

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 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 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.

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 public juris and common to the trade.   

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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 or services marketed by  

him is clearly ‘NO’.  

19) 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, we find that  

there are more than 20 traders in the city using the word “RAMAYAN”  

as a mark for the similar products and 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  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.  

21) Further, the respondent herein claimed that though he had been  

in  the  business  since  1980,  he  had  developed  and  published  the  

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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.   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 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 earlier in point of time to that of the appellant herein.   

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.

...…………….………………………J.                            (RANJAN GOGOI)                                  

.…....…………………………………J.                     (R.K. AGRAWAL)                                  

NEW DELHI; OCTOBER 27, 2015.  

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ITEM NO.1A               COURT NO.14               SECTION XVI (For Judgment)                S U P R E M E  C O U R T  O F  I N D I A                        RECORD OF PROCEEDINGS

Civil Appeal  No(s).  2138/2006 LAL BABU PRIYADARSHI                               Appellant(s)                                 VERSUS AMRITPAL SINGH                                     Respondent(s)

Date : 27/10/2015 This appeal was called on for pronouncement of  judgment today.

For Appellant(s) Mr. K. V. Mohan, AOR                       For Respondent(s) Mr. Sohan Singh Rana, Adv.

Mrs. Bindra Rana, Adv.                   For M/s S. S. Rana & Co.                                             

Hon'ble Mr. Justice R.K. Agrawal pronounced the reportable  judgment of the Bench comprising Hon'ble Mr. Justice Ranjan Gogoi  and His Lordship.  

The appeal is dismissed  in  terms of the signed reportable  judgment.  

(R.NATARAJAN)        (SNEH LATA SHARMA)  Court Master       Court Master

(Signed reportable judgment is placed on the file)  

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