Imperial Tobacco Company v. Registrar of Trademark AIR 1968 Cal 582
FACTS
The Appellant in this case i.e. the Imperial Tobacco Company made its first application for registration of a trade mark before the Registrar applying for registration as a trade mark of a label bearing the device of snow-clad hills in outline and the word "Simla" written prominently in various panels of the label. The specification of the goods in the application reads as "Manufactured tobacco". "Word Simla' which forms the essential and distinguishing feature of the mark is a famous geographical name and is not registerable except on very strong evidence of distinctiveness. Its geographical signification was thus plain and unequivocal and the snow-clad hills in outline in the label made the geographical significance inescapable.
PROCEDURAL HISTORY
The Registrar of Trademark rejected the application. Registrar stated that in order to be registerable, the mark should have acquired distinctiveness on the date of making the application for registration. ITC filed a fresh application, 3 years later in 1963 for same trademark claiming that the trademark has achieved distinctiveness. This application was also rejected by the Registrar of Trademark. Hence the appeal.
ISSUE
Whether this geographical name "Simla" has acquired distinctive ness within such a short period between, April 1960(first application) and July 1963(Second Application) which is barely a period of 3 years?
HELD
The Registrar finds that the appellants have no branch at Simla and that tobacco is not grown nor is there any factory for manufacturing tobacco goods in the district or town of Simla.
The Registrar took the view that informed smokers may not be deceived, but to an ordinary
smoker, who had no special knowledge, Simla might not appear to be a totally unlikely place to be associated with the origin of the cigarettes, and he would, therefore, be deceived by the
appellant's mark. The court held that evidence of distinctiveness is necessary for granting
trademark. It was held that the evidence provided by the appellant showing the sales of the
cigarettes in the country is not a sufficient proof to establish distinctiveness. The court was of the view that if such trademark is granted, it will be a problem for someone who is from Shimla and wants to use the trademark if he plans to manufacture cigarettes or any other product in Shimla.
Thus the Registrar’s decision to refuse the application was upheld.
RATIONALE
Registration of a geographical name is not allowed unless it is proved that the mark has acquired distinctiveness because of its use or if it is a well-known mark. Distinctiveness cannot be proved by the sales of the product, financial proofs or popularity.
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