PRABHA SRIDEVAN - (1.) THIS appeal is against the order referring to register the mark GUTKA in favour of the appellant herein. The Registry cancelled the advertisement of the mark and the application was rejected on the ground that GUTKA could not be registered as a trade mark.
(2.) THE learned counsel for the appellant submitted that the application was in the year of 1984 and therefore one must put oneself back in time and decide the matter accordingly. The learned counsel submitted that it is only on being satisfied that the mark was registerable that it was directed to be advertised and thereafter it is not open to the succeeding registrar to take a different view. The learned counsel submitted that the mark had acquired distinctiveness. The Registrar could not have given a finding that it was generic based on the probability, it should be a concrete finding of fact, that the evidence based on which the registration was removed must be considered evidence. According to him u/s 19 of the Trade and Merchandise Marks Act, 1958 (Act in short) there is no occasion for any objector to invoke the jurisdiction of the Registrar. The matter was solely between the Registrar and applicant and no objector should have been heard.
(3.) THE learned counsel made elaborate arguments with regard to the mark GUTKA, however, we find that many of these issues had attained finality by the order of the Hon'ble Delhi High Court in C.M. NO.103/1998 dated 23rd July, 1998. The same appellant was the writ petitioner therein. He challenged the issuance of the letter dated 21.10.1997 whereby a show cause notice was issued u/s 18(4) & 19 of the Act. Before the Hon'ble Delhi High Court, the appellant claimed that in the year 1977, the son of the appellant introduced a small pouch for which he had given the name GUTKA, they were sold in the name Prince (Registered No.414884B in Class 31). On 5th May, 1984, an application was made under No.421497 in Class 34 for the mark GUTKA. On 10th December, 1987 the objections were invited. After the Deputy Registrar passed the order on 26.04.1993, the impugned notice was issued to show cause. Before the Hon'ble Delhi High Court, the same contention was raised that the Registrar has no power to reconsider after virtual acceptance of an application for registration, but before actual registration. This objection was rejected by the Hon'ble Delhi High Court in view of Section 18(4)/19, it was held that "it is very much evident that the Registrar may withdraw the acceptance of the trade mark". As far as the trade mark concerned, the Hon'ble Delhi High Court held that "if GUTKA is used with some other words, it acquires a special meaning, otherwise it is very generic word which cannot be monopolised by anybody". The Hon'ble Delhi High Court directed that the Registrar of Trade Mark should hear the applicant and the alleged objectors to decide the question "whether the applicant through trade mark GUTKA has acquired any reputation in relation to his goods like the word Safi' in reported case".;