- (1.) This is an application from the decision of the Deputy Registrar of Trade Mark dated 14th of May, 1968 whereby the Deputy Registrar has rejected the application by the appellant for registration in Part A of the Register of a trade mark consisting of the mark "Jidi" in Clause 5, in respect of "medicinal preparations". Without advertising the said application on the objection of the registry the application for registration was rejected by the Deputy Registrar under Section 18(4) of the Trade & Merchandise Marks Act, 1958. The said subsection of Section 18 authorizes the Registrar to refuse an application subject to the provisions of the Act. The Deputy Registrar was of the view that the expression "Jidi" was phonetically equivalent to the letters "G. D.", and as such was not registrable except upon evidence of distinctiveness and as according to the Deputy Registrar the mark was used only for a few months no evidence of distinctiveness was possible. The Deputy Registrar was of the view that as the mark was phonetically equivalent to the letters "G.D." was not considered to be prima facie adopted to distinguish except upon proof of the distinctiveness, which according to the Deputy Registrar was not there. On behalf of the appellant reliance was placed on clause (b) of sub-section (5) of Section 9 of the Act. The said sub-section reads as follows :- "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 :- (c) a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid, and (d) by reason of the use of the trade mark or any other circumstances, the trade mark is in fact so adopted to distinguish or is in fact capable of distinguishing as aforesaid."
(2.) The appellant contended that there were other circumstances or special circumstances and in support of this contention reliance was placed on the registered trademarks nos. 14609 and 149774. These two trade marks were registered in favour of the appellant, the first one being since 1943 and the second one since 1951. The Registered Trade Mark No. 14609 consisted of the word "ASMOLIN" in bold letters appearing at the center of the mark with a device of an elephant head appearing at the top thereof. From the tusk of the elephant hangs a small board with the letters "G.D." appearing thereon according to the Deputy Registrar in an insignificant manner. I have looked at the mark, the letters are very small. The Deputy Registrar felt that the letters "G.D." appeared on the mark in such small dimensions that no special importance could be attached to them, and therefore the said mark was registered with the claim "G.D." without any disclaimer in respect of the fact that there was no evidence of distinctiveness. Appellant had claimed before the Deputy Registrar that as no disclaimer was required and as the letters "G.D." was included in the said Registered Trade Mark 14609 in favour of the appellant, the appellant was entitled to the exclusive use of the said two letters. In this connection the Deputy Registrar has relied on sub-section (1) & (2) of Section 15 of the Act which is to the following effect :- "(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks. (2) Each such separate trade mark shall have all the conditions applying to, and have all the incidents of, an independent trade mark." The Deputy Registrar rejected the claim of the appellant and observed: - "In the first place it is not the registration of the letters "G.D." but of the expression "JIDI" which the Applicants seek. In obtaining registration of their Trade Mark No. 14609, the Applicants had not furnished any evidence of distinctiveness for the letters "G.D." Therefore, if the Applicants now come out with a claim for registration of the letters "G.D.", it would be mandatory upon them to produce satisfactory evidence of distinctiveness for them. The same principle applies to be question of the registration "JIDI". As the letters "G.D." have not been registered by themselves on satisfactory evidence of the distinctiveness the Applicants' contention that the expression "JIDI" has become distinctive on the basis of the alleged distinctiveness of the letters "G.D." is not acceptable and fails."
(3.) The appellant also claimed that since 1957 up to 1964 the appellants were the owners of the following marks with the prefix "Jidi". JUDGEMENT_47_CALLT1_1978Html1.htm;