The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks AIR 1977 Cal. 413

The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks|| The Imperial Tobacco Co. case summary 

Introduction

A very interesting case regarding the registration of a word as a trademark, which doesn't have any direct reference to the character or quality of the goods. This case discussed the validity of the registration of a geographical word as a trademark. This case was decided by The Trade And Merchandise Marks Act, 1958

Facts

The appellant company (The Imperial Tobacco Co. of India Ltd.) applied to register the word "Simla, outlined by snow-clad hills " as a trademark for its product. When the registrar refused to register, this appeal was made after its earlier appeal under 

S. 109 of The Trade And Merchandise Marks Act, 1958. was dismissed on the grounds that the word "Simla" is a famous geographical name and therefore it can not be registered except on evidence of distinctiveness. 

Issue

1. Whether the word "Simla" is entitled to registration under the Act.
2. Whether the word "Simla" acquired distinctiveness.

Arguments of the appellant counsel

1. Geographical word is not an absolute bar over registration.
2. The use of "Simla" does not cause prejudice to other traders since Simla was never a producer of tobacco.
3. The affidavit produced as evidence shows that the trademark had acquired distinctiveness.
4. No law lays down for a specific period to attain distinctiveness.
5. Clauses (a) to (e) of Section 9(5)of the Trade and Merchandise Marks Act 1958, are disjunctive, thus by following any of the clauses, a mark is entitled to registration.
6. The word "Tijuana Smalls" in Tijuana Smalls' case was registered in part B.
7. Various geographical names had already been accepted, such as 
1. Sheemla for agarbatti, 
2. Gulmarg for wire, 
3. Shalimar for engineering goods

Ratio Decidendi

1. Any geographical name in its ordinary or geographical signification is unable to be distinct, except for small and insignificant places. A geographical mark can be registered if it is adapted to be distinctive or capable of being distinctive from other producers and has less geographical significance.
2. Adapted to distinguish means the mark has some inherent qualities or characteristics in itself to distinguish it from other goods. The capability of being distinctive means distinctiveness is absent but it can be acquired by an appropriate user.
3. Although the British Act of 1919 provides for 2 years to attain distinctiveness, the Act of 1940 doesn't provide such a period. It depends on the circumstances and evidence produced on behalf of it.
4. Distinctiveness means such quality in the trademark mark which shows the given goods are different from those of other producers.
5. Use of the product can be produced as evidence and its bonafide consumers are witnesses.
6. The imprint of snow-clad hills on the outline of the word Simla shows obvious geographical signification.
7. Simla is too a prominent city, it can neither be distinctive nor adapted to distinguish from other's goods.
8. Tijuana case- Even a distinctive word couldn't be registered if its geographical significance is so general that it could be used by more than one trader.
9. Such words are only fanciful and have no geographical or ordinary signification. Also, these words have attained a secondary meaning

Decisions

1. Dismissed appeal
2. The word Simla can't be registered as a trademark.

Summary

On an appeal by the appellant company to get registered its mark "Simla outlined with a snow-clad hills" this Court upheld the validity of its earlier order to not register such words as a trademark which shows geographical signification. The court also observed certain exceptions where a geographical word can be registered as if it shows a secondary meaning other than its geographical signification and if it is the name of a less popular place. Also, the Court held that the mark must be able to distinguish itself from other producers. 

Referred Section- Section 9 of Trade And Merchandise Act, 1958

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