IN THE HON’BLE HIGH COURT OF CALCUTTA

THE IMPERIAL TOBACCO CO. OF INDIA LTD.

APPELLANT
V.

THE REGISTRAR OF TRADE MARKS AND ANOTHER

RESPONDENTS

Memorandum on behalf of the Appellant

SUBMITTED BY
PANKAJ SHARMA
SEM. – VI
SECTION -A
ROLL NO. – 100

Submitted on: 06-04-2017

 TABLE OF CONTENTS

List of Abbreviations................................................................................................1

Index of Authorities……………………………………………………….............2

Statement of Jurisdiction..........................................................................................3

Statement of Facts………………………………………………………............…4

Issues Raised………………………………………………………………......……5

-Whether geographical name “Simla” has acquired distinctiveness within a short period of 3
years on account of extensive sale and advertisement?

Summary of Arguments…………………………………………………….........….6

Arguments advanced………………………………………………..................….7

Prayer for Relief……………………………………………………..........……...11

 List of Abbreviations

& AND
§ Section
¶ Paragraph
AC Appeal Cases
AIR All India Reporter
Anr. Another
Art. Article
Co. Company
Del. Delhi
Ed. Edition
Etc. Etcetera
HC High Court
SCC Supreme Court Cases
SC Supreme Court
 Index of Authorities

Acts/Rules/Orders:

 Trade and Merchandise Marks Act, 1958

Books:

 B.L. Wadehra, Law Relating to Intellectual Property, Universal Law Publishing Co.
 Lionel Bently & Brad Sherman, Intellectual Property Law, Oxford Publication.
 P. Narayanan, Intellectual Property Law, Eastern Law House.
 VK Ahuja, Law Relation To Intellectual Property Rights, Lexis Nexis 2nd ed 2013
 Halsbury's Laws of England Third Edition, Volume 38, Art. 880
 Kerly's Law of Trade Mark and Trade Names (10th Edition)

List of Cases Referred

 Son and Morland Ltd., (1938) 55 RPC 253.

 Stilton Cheese case, 1967 RPC 173 at pp. 180-81.
 Scotsman case, 1965 RPC 358 at p. 361
 Stone Ale case (1889) 6 RPC 404 at p. 413
 Roman Holiday case, 1964 RPC 129
 The Champagne case 1961RPC 116 at p. 127
 Berna case (1915) 32 RPC 113
 Statement Of Jurisdiction

The Appellant humbly submits this memorandum of an appeal before the Honorable Court.
The Application invokes its jurisdiction under Section 109 of The Trade And
Merchandise Marks Act, 1958
 Statement Of Facts

The Appellant applied for Registration of the mark “Simla” under Part A of the Register.

A Show Cause Notice was issued to the Appellant stating that the word “Simla” is a
geographical name and registrable only on very strong evidence of distinctiveness.

On reply to the show cause notice, the Appellants provided evidence regarding extensive sale
and advertisement, that was rejected as the mark should have acquired distinctiveness on the
date of making the application.

The Appellant kept quiet for two years before a new application was filed along with 22
affidavits from various persons under Part B of the register on the same date as the previous
one was withdrawn.

After the rejection of which, this appeal was filed.

 ISSUES RAISED

 Whether geographical name “Simla” has acquired distinctiveness within a short

period of 3 years on account of extensive sale and advertisement?
 SUMMARY OF ARGUMENTS

Whether geographical name “Simla” has acquired distinctiveness within a short period
of 3 years on account of extensive sale and advertisement?

-The geographical name “simla” has been acquired distinctiveness within a short period of 3
years on account of extensive sale and advertisement. During the period of April 1960 to June
30, 1963 "The applicants have used and are continuing to use the accompanying trade mark
extensively throughout India having sold 42,2100000 cigarettes under the accompanying
trade mark and applicants had also incurred advertisement expenses of over Rs 15,50,000
during that period for popularising the accompanying trade mark.
In support of this application for registration the appellant filed 22 affidavits from different
persons, who could be classified as (1) the employees of the appellant. (2) the dealers of the
appellants' tobacco, and (3) the consumers of Simla cigarettes.
 Arguments Advance
Section 2 (v) " Trade mark" means-- (i) in relation to Chapter X (other than section 81), a
registered trade mark or a mark used in relation to goods for the purpose of indicating or so as
to indicate a connection in the course of trade between the goods and some person having the
right as proprietor to use the mark; and

(ii) in relation to the other provisions of this Act, a mark used or proposed to be used in
relation to goods for the purpose of indicating or so as to indicate a connection in the course
of trade between the goods and some person having the right, either as proprietor or as
registered user, to use the mark whether with or without any indication of the identity of that
person, and includes a certification trade mark registered as such under the provisions of
Chapter VIII;

The trade mark "Simla" with the label is composite in character. Its essential feature is the
word Simla. ''Simla" is neither an invented word nor is it a word having a dictionary meaning.
It is a well known hill-station of India. Its geographical signification is, therefore, plain and
unequivocal. The snow-clad hills in outline on the label makes the geographical significance
inescapable. The appellant's whole case now rests on 3 years prior use of this trade mark
before the date of the application for registration with the assertion that the geographical
name has acquired distinctiveness and so qualified for registration. tobacco was neither
grown nor manufactured in Simla could not deceive any one because it was a well known
fact, by the remark that it was a fact which would be known only to those people who were
living in the neighbourhood of Simla and who were equipped with all the information of the
industrial and agricultural resources of the different parts of India.

Section 9(2) of the Trade and Merchandise Marks Act, 1958 it is expressly provided,
inter alia, that a geographical name "shall not be registrable in Part A of the register except
upon evidence of its distinctiveness." Therefore a geographical name or a geographical word
is registrable on the evidence of distinctiveness.

Simla was never a tobacco producing centre or likely to be so and there is no chance or
occasion for any prejudice being caused to other traders or manufacturers. He also referred to
the Trade Marks Journal published by the Government containing advertisements of various
geographical names for acceptance: 'Sheemla' for agarbati, 'Gulmarg' for wire, 'Shalimar' for
engineering goods 'Kalighat' for biddies were cited and referred. In all such cases it appears
that the names prima facie are fanciful without geographical or ordinary signification and at
this stage it will not be proper to depend on those marks without further material or evidence.
The propositions of law in respect of geographical names have been referred to above and in
view of the imprint of snow clad hills in outline in the trade mark 'Simla' the ordinary or
geographical signification is obvious and patent even though it has no reference to the quality
or place of origin of the goods as at present advised. The words of import are "a geographical
name" and "according to its ordinary signification". There is and can be no doubt that in this
case "Simla" is a word of geographical name according to its ordinary signification within the
meaning of Section 9(1)(d) of the Act.

The appellant has submitted affidavit evidence to prove that on the date of application on
July 20, 1963 the goods (cigarettes) introduced in 1960, have in course of three years user
reached fantastic figure of sale at over Rs. 1.14 crores with advertisement costs of over Rs
15.50 lakhs, Mr. Chakraborty also filed an application before us in support of his case that the
sale figure has been constantly increasing since along with costs of ad-vertisement.

'Distinctiveness' has been understood to mean 'some quality in the trade mark which
earmarks the goods so marked as distinct from those of other producers of such goods'.

There can be little dispute that the acquisition of distinctiveness of a trade mark is a long
laborious and time consuming process. Even so, no time limit is fixed by statute and in the
British Act of 1919 two years bona fide user was considered sufficient There may be a case
where for sundry reasons, a trade mark may attain the requisite distinctiveness within a
"magically short period and it is not possible to predicate or lay down any hard and fast rule
about the period of time on the expiry whereof only a trade mark by user can attain
distinctiveness required under the statute. Every case will depend on the attending
circumstances and evidence adduced in support of the acquisition of distinctiveness.

Kerly's Law of Trade Mark and Trade Names

It will be apparent on comparing Section 10 with Section 9 that so far as regis-trability is

concerned, the differences between Part A and Part B are (1) that in the former the mark must
be "adapted to distinguish" and in the latter "capable of distinguishing" (the context being
virtually identical); and (2) that in the case of names, signatures or words which do not fall
within paragraphs (a) to (d) of Section 9(1), so that registration in Part A ran only be granted
upon evidence of distinctiveness such evidence is not required for Part B if it is possible
without evidence to saitsfy the tribunal that the mark is capable of distinguishing the goods.

Halsbury's Laws of England Third Edition,1

Requirements for registration in Part B.-- To be registrable in Part B of the register, a mark
must be capable of distinguishing goods for which it is registered and in judging of such
capacity the tribunal may take into account both the inherent qualities of the mark and the
extent to which user or other circumstance has rendered it so capable."

9. Requisites for registration in Parts 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) the signature of the applicant for registration or some predecessor in his business;

(c) one or more invented words;

(d) one or more words having no direct reference to the character or quality of the goods and
not being, according to its ordinary signification, a geographical name or a surname or a
personal name or any common abbreviation thereof or the name of a sect, caste or tribe in
India;

(e) any other distinctive mark.

(2) A name, signature or word, other than such as fall within the descriptions in clauses (a),
(b), (c) and (d) of sub- section (1), shall not be registrable in part A of the register except
upon evidence of its distinctiveness.

(3) For the purposes of this Act, the expression" distinctive" in relation to the goods in
respect of which a trade mark is proposed to be registered, means adapted to distinguish
goods with which the proprietor of the trade mark is or may be connected in the course of
trade from goods in the case of which no such connection subsists either generally or, where
the trade mark is proposed to be registered subject to limitations, in relation to use within the
extent of the registration.

1
Volume 38, Art. 880
(4) A trade mark shall not be registered in Part B of the register unless the trade mark in
relation to the goods in respect of which it is proposed to be registered is distinctive, or is not
distinctive but is capable of distinguishing goods with which the proprietor of a trade mark is
or may be connected in the course of trade from goods in the case of which no such
connection subsists, either generally or, where the trade mark is proposed to be registered
subject to limitations, in relation to use within the extent of the registration.

(5) In determining whether a trade mark is distinctive or is capable of distinguishing as

aforesaid, the tribunal may have regard to the extent to which--

(a) a trade mark is inherently distinctive or is inherently capable of distinguishing as

aforesaid; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in
fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.

(6) Subject to the other provisions of this section, a trade mark in respect of any goods--

(a) registered in Part A of the register may be registered in Part B of the register; and

(b) registered in Part B of the register may be registered in Part A of the register; in the name
of the same proprietor of the same trade mark or any part or parts thereof.

In regard to registration in Part B of the register, on the ground that the mark had been
in extensive use for 3 years prior to the material date and did in fact distinguish the goods of
the appellant.provisions have been made in Sub-section (4) of Section 9. The essential
conditions are that the mark in relation to goods proposed to be registered is (1) distinctive or
(2) if not distinctive, capable of distinguishing the goods of the applicant from those of
others. To be distinctive (which means adapted to distinguish) or capable of distinguishing
the goods as aforesaid, there may be some inherent qualities or distinguishing characteristics
in the mark itself which may make it so distinctive or capable of such distinguishing the
goods of the applicant from others.

In the case of Tijuana Smalls' case2 where registration in respect of cigars was allowed in
Part B Tijuana is a town in Mexico with inhabitants over 2 lakhs Graham J. in allowing
registration in Part B held that the question whether a geographical word could be registered

2
(1973 RPC 453).
was one of degree. These words whose primary signification is geographical and where the
geographical significance is so general and so likely to be adapted or desired for use by more
than one trader, it would be wrong, however distinctive they might in fact have become ever
to allow one trader by registration to seek to monopolise them (e. g. Yorkshire or Liverpool).
There are other 'geographical' words (e. g. North Pole) where, for one reason or other, when
considered as applied to the goods in respect of which it is sought to register them, it is clear
that the use is in fact clearly not geographical but fanciful, and was therefore, at least,
capable, particularly by use, of being distinctive in practice of one of manufacturers' goods.
Registration could, therefore, in such cases be allowed without causing inconvenience to or
encroaching upon the reasonable trading rights of other manufacturers.

Geographical names have been registered in Class 34, in India. He collected his materials
from the Trade Marks Journal with considerable industry to show that such geographical
names as St. Moritz, North Pole Everest, Medina, Panama. Oxford, Kali-ghat, Ellora,
Mavfair, West End, Gulmarg, London etc. have been registered. To support his endeavour he
produced the list which will be kept with the records of this appeal and which is not objected
to on behalf of the Registrar

Scotsman's case, 3observed that the word "Scotsman" in that case had qualified for
registration under Section 9(1) (d) being a word having no direct reference to the character or
quality of the goods and that it was a figurative or fanciful suggestion of association which
the public would accept as such and no more would not be objectionable".

Stilton Cheese case reported4 it was found and held that the word "Stilton" had been used for
50 years to denote exclusively cheese manufactured by the particular process and in that
particular district and therefore it was held that the word "Stilton" was inherently adapted to
distinguish. the evidence before Court at this stage is conclusive that in the trade and amongst
the gastrenomic experts the name indicates not only those physical properties", (shape,
colour, taste etc.) "but also a certain method of manufacture and in particular the region from
which the cheese comes. Upon this evidence I think one must treat the name 'Stilton' as being
distinctive in the sense in which the word 'distinguish' is used in Section 37" of the Trade
Marks Act 1938 in England.

3
(1965) 1965 RPC 358
4
in (1967) 1967 RPC 173
 PRAYER FOR RELIEF

In light of the facts stated, arguments advanced and authorities cited, the Appellant, humbly prays
before the Honorable Court, to adjudge and declare that:

I. The Appellant in the suit pray for registering a trademark used as wrapper of packets of
cigarettes bearing the device of snow clad hills in outline with the word 'Simla' written
prominently in various panels of the label with small inscription.

The Court may also be pleased to pass any other order, which the court may deem fit in light of
justice, equity and good conscience.

All of which is most humbly prayed.

Counsel on behalf of Appellant

Date: 6th April, 2017