The case of Vishnudas Trading As Vishnudas vs The Vazir Sultan Tobacco Co. Ltd. is a landmark judgment by the Supreme Court of India that deals with the scope of trademark registration under the Trade and Merchandise Marks Act, 1958. The primary issue in this case revolves around the rectification of a registered trademark, the exclusive rights of a registered proprietor over an entire class of goods, and whether registration under a broad classification grants a monopoly over all products within that class.
Detailed Factual Background
The respondent, The Vazir Sultan Tobacco Co. Ltd., has been manufacturing cigarettes under the brand name "Charminar" since 1942. The company obtained trademark registrations for the word "Charminar" in 1942 and 1955 under Class 34 for “manufactured tobacco.” However, despite obtaining this registration, the company has only manufactured cigarettes and has never engaged in the production of other tobacco-related products such as zarda (chewing tobacco) or quiwam.
The appellant, Vishnudas Trading, has been manufacturing quiwam and zarda since 1973 and used the name "Charminar" on its products. The appellant’s trademark for quiwam and zarda had a different logo and depiction from that of the respondent’s cigarette brand. When the appellant applied for registration of its trademark under Class 34, the respondent opposed it, arguing that the mark "Charminar" was already registered in its name.
The appellant, contending that the respondent never manufactured quiwam or zarda, filed applications under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958, seeking rectification of the respondent’s trademark registration so that it would be limited to cigarettes only rather than covering all products under "manufactured tobacco."
Detailed Procedural Background
The matter was initially heard before the Assistant Registrar of Trade Marks, Madras. The Assistant Registrar ruled in favor of the appellant on August 31, 1976, holding that the respondent's trademark registration should be rectified to be limited only to cigarettes under Class 34. The Assistant Registrar reasoned that since the respondent never manufactured quiwam or zarda, its registration for "manufactured tobacco" was too broad and prejudicial to other traders.
The respondent then appealed before the Madras High Court under Section 109(2) of the Trade and Merchandise Marks Act, challenging the rectification order. On September 11, 1980, the Single Judge of the Madras High Court overturned the Assistant Registrar’s order, ruling that no sub-classification could be made within Class 34, which covers all manufactured tobacco products. The court held that there was no requirement to prove actual use of the trade mark for all items under the class.
The appellant then challenged the Single Judge’s decision before the Division Bench of the Madras High Court under Section 109(5). On October 11, 1990, the Division Bench upheld the Single Judge's ruling, reaffirming that the registration of "Charminar" for "manufactured tobacco" was valid, as cigarettes fell within this class. The court ruled that the rectification application was not maintainable since the registrar could not sub-classify goods under a single class.
Aggrieved by the High Court’s decision, the appellant approached the Supreme Court of India.
Issues Involved in the Case
The primary issue before the Supreme Court was whether a trademark registered under a broad classification such as "manufactured tobacco" under Class 34 can be limited to specific goods through rectification. Another important question was whether non-use of a registered trademark for some products within a class justifies rectification under Sections 46 and 56 of the Trade and Merchandise Marks Act. The court also examined whether the registration of a trademark for an entire class prevents other traders from using the same or similar trademark for distinct products under that class.
Detailed Submission of Parties
The appellant argued that the respondent’s registration under "manufactured tobacco" was too broad and covered several distinct products such as cigarettes, zarda, quiwam, and snuff. The appellant contended that the respondent had never manufactured anything other than cigarettes and thus should not be allowed a monopoly over all goods in Class 34. It was argued that the Trade Marks Act does not grant absolute rights over an entire class but rather grants rights over specific goods. The appellant also submitted that the High Court erred in holding that rectification was not maintainable, as non-use of a trademark for certain goods warrants rectification. The appellant relied on Edwards v. Dennis (1885) 30 Ch. Div. 454, which held that trademark registration should be limited to goods actually manufactured.
The respondent contended that its registrations in 1942 and 1955 were valid under Class 34, which includes all manufactured tobacco products. It was argued that the law does not require proof of use for all goods within a class. The respondent relied on Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142), which held that confusion arises when similar marks exist in a common trade channel. The respondent submitted that the Madras High Court had rightly held that classification under Class 34 could not be sub-divided.
Discussion on Judgments Cited
In Edwards v. Dennis (1885) 30 Ch. Div. 454, the English court held that trademarks should be limited to specific goods actually used, preventing broad monopolization. The decision emphasized that registration should be restricted to goods in connection with which it is actually being used. This case was used by the appellant to argue that registration should be limited to cigarettes only.
In Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142), the Supreme Court of India ruled that trade connection between goods can create confusion. This case was cited by the respondent to argue that allowing "Charminar" for quiwam and zarda would mislead consumers into thinking that the products originated from the same manufacturer.
In American Home Products Corporation v. Mac Laboratories Pvt. Ltd. (1985 Supp. (3) SCR 264), the Supreme Court of India ruled that a trademark owner cannot claim rights over an entire class if they have no intent to use the mark for all goods. This decision supported the argument for rectification of the respondent’s registration.
The case of Lever Brothers, Port Sunlight, Ltd. v. Sunniwite Products Ltd. (LXVI RPC 84) was also discussed. In this case, the English court held that a manufacturer who has used a trademark on one specific product cannot claim exclusive rights over other products within the same class. The court found that a trademark should be linked to specific goods rather than a broad category.
Detailed Reasoning and Analysis of Judge
The Supreme Court reasoned that the Trade Marks Act aims to prevent monopolization over an entire class when the proprietor has no intention to use the mark for all goods in that class. The court noted that "manufactured tobacco" includes many distinct products, each sold and marketed separately. The respondent had used "Charminar" only for cigarettes and had never used it for quiwam, zarda, or snuff. The court held that rectification is justified to allow fair competition and prevent unwarranted monopolies. The High Court erred in denying rectification, as non-use was evident.
Final Decision
The Supreme Court allowed the appeals, set aside the High Court’s judgment, and restored the order of rectification passed by the Assistant Registrar of Trade Marks, Madras. The court ruled that the respondent’s trademark registration should be limited only to cigarettes and should not cover other tobacco products such as zarda or quiwam.
Key Legal Principles Established:
