1996 (7) TMI 553 - SC - Indian Laws

Summary

Issues Involved:
1. Registration of Trade Marks for "manufactured tobacco" under Class 34.
2. Non-use of the trade mark for goods other than cigarettes.
3. Rectification of the trade mark registration.
4. Exclusive rights to use the trade mark "Charminar."
5. Infringement of trade mark and passing off.
6. Classification of goods under the Trade Marks Act and Rules.

Detailed Analysis:

1. Registration of Trade Marks for "manufactured tobacco" under Class 34:
The respondent company has been manufacturing cigarettes under the brand name "Charminar" since 1942 and 1955, obtaining trade mark registration for "manufactured tobacco" under Class 34. The appellant has been using the same trade mark for quiwam and zarda since 1973. The appellant's application for registration was declined due to the respondent's existing registration.

2. Non-use of the trade mark for goods other than cigarettes:
The respondent company has not manufactured any other tobacco products apart from cigarettes. The Assistant Registrar of Trade Marks allowed the appellant's application for rectification, restricting the respondent's trade mark registration to cigarettes only, due to non-use for other tobacco products.

3. Rectification of the trade mark registration:
The Assistant Registrar's decision to rectify the trade mark registration was based on the fact that the respondent company had no intention to manufacture other tobacco products. The Single Judge and Division Bench of the Madras High Court set aside the rectification, holding that the registration for "manufactured tobacco" should not be limited to cigarettes.

4. Exclusive rights to use the trade mark "Charminar":
The respondent company claimed exclusive rights to use the trade mark "Charminar" for all goods under "manufactured tobacco." The appellant argued that such a broad registration precludes other traders from registering the trade mark for different tobacco products.

5. Infringement of trade mark and passing off:
The respondent company argued that the appellant's use of the trade mark "Charminar" for quiwam and zarda infringed its trade mark. However, the Supreme Court focused on the issue of rectification rather than infringement or passing off.

6. Classification of goods under the Trade Marks Act and Rules:
Class 34 includes various tobacco products, each with distinct characteristics and uses. The appellant contended that trade mark registration should be specific to particular goods rather than a broad class. The Supreme Court held that it is permissible to register specific products under a class, and the rectification restricting the respondent's trade mark to cigarettes was justified.

Conclusion:
The Supreme Court allowed the appeals, setting aside the judgments of the Madras High Court and restoring the order of rectification by the Assistant Registrar of Trade Marks. The rectification limiting the respondent's trade mark registration to cigarettes was deemed valid and justified. The Court did not address issues of infringement, passing off, or defensive registration, focusing solely on the propriety and validity of the rectification order.