Vishnudas Trading As Vishnudas Vs. The Vazir Sultan Tobacco Co. Ltd.:Trademark holders cannot monopolize an entire product category without genuine use or intent to use.
Case Title:Vishnudas Trading As Vishnudas Vs. The Vazir Sultan Tobacco Co. Ltd.
Date of Judgment: 9 July 1996
Case No.: Not explicitly mentioned in the document
Neutral Citation: JT 1996 (6) 366, 1996 SCALE (5) 267, AIR 1996 SC 2275, 1997 (4) SCC 201, 1996 AIR SCW 2870, 1996 (2) ARBI LR 222
Court: Supreme Court of India
Judges: Justice G.N. Ray, Justice G.B. Pattanaik
Introduction:The case revolved around the rectification of trademark registration under the Trade and Merchandise Marks Act, 1958. Vishnudas Trading, a manufacturer of quiwam and zarda (chewing tobacco products), sought rectification of the registered trademark "Charminar" held by The Vazir Sultan Tobacco Co. Ltd. (respondent), which had been using the mark exclusively for cigarettes. The key legal question was whether a trademark registered under a broad class (Class 34 – "Manufactured Tobacco") could be limited in scope to only the goods actually manufactured by the trademark holder.
Factual Background:
Respondent’s Trademark Registration:
The Vazir Sultan Tobacco Co. Ltd. had been manufacturing cigarettes under the brand name "Charminar" since 1942.
In 1942 and 1955, the company obtained trademark registration for "Charminar" under Class 34 ("Manufactured Tobacco").
The company, however, never manufactured any other tobacco products apart from cigarettes.
Petitioner's Trademark Usage:
Vishnudas Trading, since 1973, had been manufacturing quiwam and zarda, using "Charminar" on their packaging.They applied for registration of the same mark under Class 34 for chewing tobacco products.
The Registrar of Trademarks refused the application, citing a conflict with the respondent’s prior registered mark.
Filing of Rectification Petition:Vishnudas Trading, unable to register their mark, filed a rectification petition under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958, before the Registrar of Trademarks.The ground for rectification was non-use of the trademark by the respondent for quiwam and zarda, despite its registration under Class 34.
Procedural Background:
Assistant Registrar’s Order (1976):
The Assistant Registrar allowed the rectification and directed that the trademark registration be restricted to "cigarettes" alone.
Madras High Court - Single Judge (1980):
The respondent challenged the Assistant Registrar's order before the Madras High Court.The Single Judge overturned the rectification order, holding that registration under Class 34 covered all tobacco products, making further sub-classification impermissible.
Madras High Court - Division Bench (1990):
Vishnudas Trading appealed before the Division Bench.The Bench upheld the Single Judge’s order, dismissing the rectification plea.
Supreme Court Appeal (1996):Vishnudas Trading challenged the High Court’s decision before the Supreme Court, arguing that allowing broad registration without actual use would create an unfair monopoly.
Issues Involved:
Whether the respondent’s trademark registration under Class 34 should be restricted only to "cigarettes" due to non-use on other products like quiwam and zarda.
Whether a trader can claim exclusive rights over an entire class of goods without actually manufacturing or trading in all such goods.
Whether the rectification of the registered trademark was justified under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958.
Submissions of Parties:
Arguments by Vishnudas Trading (Appellant):
A trademark should be granted for specific goods, not for an entire class in a generic manner.
"Manufactured Tobacco" (Class 34) is too broad, covering various distinct products like:Cigarettes, cigars, bidis
Chewing tobacco (quiwam, zarda, gutka)
Snuff (tobacco powder for inhalation)
Since the respondent only manufactured cigarettes, it could not claim exclusive rights over chewing tobacco products like quiwam and zarda.
Non-use of the mark for chewing tobacco warranted rectification of the trademark register under Section 46 of the Act.
Arguments by Vazir Sultan Tobacco Co. Ltd. (Respondent):
Trademark registration under a class covers all goods within that class, irrespective of whether the company manufactures all of them.
Class 34 does not distinguish between cigarettes, quiwam, or zarda—all fall under "manufactured tobacco."
Allowing rectification would set a dangerous precedent, permitting traders to limit registered trademarks unfairly.
Judgment and Reasoning of the Supreme Court:
Key Observations:
Trade Mark Law is meant to prevent monopolization:
A trader cannot claim a monopoly over an entire class of goods if they do not manufacture or intend to manufacture all goods under that class.Cigarettes and Chewing Tobacco are distinct goods:Different nature (one is smoked, the other is chewed).Different consumer base (smokers vs. tobacco chewers).
Different trade channels.A broad registration without genuine intent to use for all goods is improper.
Supreme Court’s Decision:
Allowed the rectification and restored the Assistant Registrar’s order.
The trademark "Charminar" was restricted to "cigarettes" only, and the respondent could not claim exclusive rights over chewing tobacco.
Key Legal Principles Established:
Trademark registration cannot extend to an entire class if the registrant only manufactures one or some products within that class.
Non-use of a mark for certain goods within a class can justify rectification under Section 46 of the Trade and Merchandise Marks Act, 1958.
Cigarettes and chewing tobacco (zarda, quiwam) are distinct products, requiring separate trademark consideration.
Broad registrations should not be used to create unfair monopolies and stifle fair competition.
This case remains a landmark precedent in Indian trademark law, ensuring that trademark holders cannot monopolize an entire product category without genuine use or intent to use.
Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
