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Can any one claim that “AYUR” is an invented word? Can anyone claim that Ayur (short A) differs from Ayur (long A)? Can anyone claim that in India the home of Ayurveda, he alone can use Ayur? (Charaka and Susruta the fathers of Ayurveda must be looking sadly from wherever they are). Can any one claim such a monopoly over the letters A, Y and U that even the word “MAYUR” gets thrown over? The answer should be No. But the respondent would like to hear a Yes.= Finally we are of the opinion that – (a) The respondent has admitted “AYUR” means ‘life’. Therefore their contention that “AYUR” is an invented word is unacceptable; (b) The respondent claims that the mark is used for non-ayurvedic product. If so, the use of “AYUR” is deceptive since the ordinary consumer will think it is an ayurvedic product; (c) Contrarily the respondent also claims it is rooting their products in Ayurveda. If so, use of the mark is descriptive and cannot be accepted; (d) “AYU” and “AYUR” are words belonging to the public domain; no one can appropriate it exclusively; (e) Admittedly, “AYUR” means life and the words are associated in the public consciousness with ‘Ayurveda’ and ‘healthy life’ and no one can appropriate it to oneself; (f) The respondent has not proved that the mark has acquired distinctiveness and in fact such a mark can never acquire distinctiveness. It is like using the mark “Soap” for soap; (g) The applicant on the other hand has produced evidence to show that “AYUR” means ‘Ayurveda’ to the consumers or it means ‘life’ or ‘ayurvedic’ product, so the mark is likely to cause confusion and deception; (h) The respondent has stated before the English Court in the decision of the Cancellation Division, that ‘Ayurveda’ means ‘science of life’. Therefore the respondent has misled the Registrar. This mark shall not remain on the Register; (i). The mark cannot pass either the test of Section 11 nor the test of Section 9 of the Act; and (j) Public interest would be harmed if this mark remains in the register thereby preventing other persons in our country access to a common Indian word denoting an ancient system of medicine. 23. For all these reasons, the marks bearing Nos.421919 in Class 3, 504095 in Class 5, 691956 in Class 3, 691957 in Class 3 and 691958 in Class 3 are removed. The applications TRA/138/2004/TM/DEL (CO No.6/2003), TRA/139/2004/TM/DEL (CO No.8/2003), TRA/116 to 118/2004/TM/DEL (CO No.9 to 11/2003) are allowed with costs of Rs.1,00,000/- in aggregate, that is, @ Rs.20,000 for each of the rectification petition.

INTELLECTUAL PROPERTY APPELLATE BOARD

Hindustan Unilever

Hindustan Unilever (Photo credit: Wikipedia)

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018

 

(CIRCUIT BENCH SITTING AT DELHI)

 

TRA/138/2004/TM/DEL (CO No.6/2003) TRA/139/2004/TM/DEL (CO No.8/2003)

TRA/116 TO 118/2004/TM/DEL (CO No.9 to 11/2003)

 

FRIDAY, THIS THE 18th DAY OF MAY, 2012

 

Hon’ble Smt. Justice Prabha Sridevan                   …  Chairman

Hon’ble Ms.S. Usha                                                      …  Vice-Chairman

 

Hindustan Unilever Limited

Hindustan Lever House

165/166, Backbay Reclamation

Mumbai-400020                                                           … Applicant

 

(Applicant name amended as per Order of the Board dated 24.11.2009 in M.P.Nos.231/09 to 235/09)

 

(By Advocate:  Shri Sanjay Kher, Shri Ajay Rao, Ms. Arti Renuka)

 

Vs.

1.         M/s. Three-N-Products (P) Ltd.

3030, Street No.4

Ranjit Nagar

New Delhi-110008.

 

2.         The Registrar of Trade Marks

Trade Marks Registry

Okhla Industrial Area

New Delhi-110020                                               … Respondents

  (By Advocate:     Shri S.C. Aggarwal, Senior Advocate,

Shri Shailen   Bhatia, Shri S.C. Chadha,

 Ms. Zeba T. Khan, Shri Arun K. Jha and

 Shri Gopal Tiwari)

ORDER (No.117/2012)

 

Hon’ble Smt. Justice Prabha Sridevan, Chairman:

 

Can any one claim that “AYUR” is an invented word?  Can anyone claim that Ayur (short A) differs from Ayur (long A)?  Can anyone claim that in India the home of Ayurveda, he alone can use Ayur? (Charaka and Susruta the fathers of Ayurveda must be looking sadly from wherever they are).  Can any one claim such a monopoly over the letters A, Y and U that even the word “MAYUR” gets thrown over?  The answer should be No.  But the respondent would like to hear a Yes.

 

2.         AYUR is a generic word. A common blessing is for Ayur and Arogyam, and so too is Ayushman bhava. To hoard it as a mine-own- forever is not in public interest. Such a monopoly was never intended by the Trade Marks Act, 1999 (‘Act’ in short). The Registrar had raised valid doubts regarding registration of the marks impugned herein but then granted registration to the mark “AYUR” resulting in what the Applicant calls ‘a reign of terror over the market”.  The marks are Nos.421919 in Class 3, 504095 in Class 5, 691956 in Class 3, 691957 in Class 3 and 691958 in Class 3.

 

3.         The applicant claims to be the leader in a variety of products which includes home and personal care products, ayurvedic products, foods and beverages etc. The parent company, Unilever have an association with India for more than 100 years. Their products include SUNLIGHT soap, KISSAN, TAJ MAHAL tea, BRU instant coffee, RIN detergent soap,  CLINIC PLUS shampoo etc. The applicant in May, 2002 launched its line of Ayurvedic health and beauty care products appropriated under the trade mark “LEVER AYUSH”. According to the applicant, the purity of the product was endorsed by the renowned ‘Arya Vaidya Pharmacy’ in Coimbatore.  The applicant seeks rectification of the mark “AYUR” which is a commonly used word, which is derivative of the word AYURVEDA, a 5000 year old knowledge of medicine. The primary association it conjures in the minds of the common consumers is a “system of medicine, which deals with natural plants, herbs and minerals”. The registration of the mark “AYUR” by the respondent is a blatantly dishonest and over-reaching attempt to monopolize a word which is inherently generic. The existence of the mark would obstruct the legitimate rights of various traders and manufacturers of ayurvedic products. The applicant claims that monopoly will cause confusion and mislead the public. The respondent had filed Suit No.2 of 2003 in the District Court of Ernakulam wherein it was contended that “LEVER AYUSH” is deceptively similar to the impugned mark “AYUR”. Therefore the applicant is aggrieved and has filed the applications.

 

4.         In the counter, the respondent claims that this petition is malafide. They are the registered proprietors of the copyright mark “AYUR” for various classes including Class 3. In the Counter Statement, sales as well as the advertisement expenses have been given. They started with manufacture of bleaching preparation which include soaps, nail polish etc. and the registered proprietors have been given licence by the owner to use the mark “AYUR”. They have diversified their activities. They have registrations in virtually all classes of Schedule IV for over 25 years.  “AYUR” distinguishes them. All the marks in which they have obtained registration artistic work of ”AYUR” is given. According to them they have also obtained registrations in other countries. They claim the domain name “http://www.ayurherbals.com”. The respondents have been conferred with various awards. They have also been in several proceedings both before the IPAB and the High Court of Delhi. Judgments have been given in their favour. They have filed nearly 452 oppositions which shows how vigilantly they are protecting their mark. The mark Ayur (Hindi) has been held to be an invented word by the Delhi High Court in 2000 24 PTC 518 Delhi – Three-n-Products Private Limited, Petitioner Vs. Yashwant and Others, Respondents.  The trade mark “Ayur” has nothing to do with Ayurvedic products. The mark deserves continuous protection. They have been in the market for almost two decades uninterruptedly.  The mark cannot be removed.

 

5.         There are five rectification applications – TRA/138/2004/TM/DEL, TRA/139/2004/TM/DEL and TRA/116 to 118/2004/TM/DEL but basically the contentions are the same.

 

6.         Oral and written submissions were made. The learned Counsel for the applicant submitted that the respondent has unleashed a reign of terror. “AYUR” is generic and descriptive and the registration has adversely affected the rights of other companies and other manufacturers. The registration was obtained by misleading the Registrar. The learned Counsel submitted that in the First Examination Report and in the Second Examination Report the Registry held that “AYUR” is a short form of AYURVEDA. The learned Counsel submitted that it is not clear how in spite of the fact that twice such objections were raised the mark got into the register. The learned Counsel submitted that “AYUR” is not a trade mark within the meaning of the Act. The entire approach of the respondent is not bonafide and the respondent has wrongly got the registration. The learned Counsel submitted that no one can claim that they invented the word “AYUR” and that “AYUR” (short A) and AYUR (long A) cannot be distinguished. A person asking for “AYUR” at a shop is hardly likely to make a distinction between a shortened vowel and an elongated vowel.

 

7.         No secondary meaning of “AYUR” has been proved.  The claim of the respondent that it is not descriptive since they are not dealing in ayurvedic product, means it is then deceptive. Any one who is buying a product bearing the mark “AYUR” will naturally think that he/she is purchasing an Ayurvedic product. So the case of the respondent, that it is not dealing in Ayurvedic product means that it is deceiving the common man. In the company profile which was marked, it is explained that “AYUR” means “life”. Then the respondent cannot truthfully claim it is an invented word. According to the learned Counsel this registration is a weapon of deception in the hands of the respondent. Merely filing an affidavit stating that they have acquired ‘distinction’ is not sufficient. The acquisition of distinctiveness has to be proved.  All the marks were filed as “proposed to be used”. The very fact that the respondent had to fight 452 oppositions shows that the common perception is that the word “AYUR” can be used  in conjunction with other words as trade marks. The learned Counsel submitted that registration could have been given to the respondent disclaiming the word “AYUR”.or “AYUR” in conjunction with some other word like Three-n-Products. The sales figures in the counter statement without any Chartered Accountants’ certificate cannot be taken as evidence of proof. The registration is clearly contrary to law. Since the respondent had contended that the applicants have not been selling LEVER AYUSH products, evidence has been produced. The learned Counsel asserted that the applicant continued to sell the product “LEVER AYUSH”.  The learned Counsel submitted that Section 32 cannot be read in isolation and Section 9 casts a shadow on Section 32. The learned Counsel submitted that the cause of action still existed and the respondent cannot be heard to say that the applicant is not a ‘person aggrieved’. The learned Counsel requested the Board to look at the documents taken from the Trade Marks Registry website and hence public documents. The learned Counsel submitted that the applicant entered the market only in 2003 and therefore they could not have acquiesced in the respondent’s mark. The applications have been filed in 2004. The applicant filed the rectification application, when the respondent barred the applicant’s use of LEVER AYUSH.  The market survey evidence shows that “AYUR” has not acquired a secondary meaning. Section 32 requires the mark to obtain distinctiveness at the commencement of the proceedings. The learned Counsel submitted that the respondent cannot in the same breath say that his mark is inherently distinctive as well as has acquired distinctiveness.   For a mark which is inherently distinctive there is no question of acquiring distinctiveness. The learned Counsel submitted that while a person who is not an Indian may not know the meaning of “AYUR” every Indian will know the meaning of “AYUR” and that  is not an invented word like “PEPSI”. When the respondent contends that it is an invented word, he pitches his mark at a level with “PEPSI” which has no secondary meaning. This would show that his claim is unsustainable. Even the Government uses “AYUR” for its licences under the Drugs and Cosmetics Act. The learned Counsel submitted that the registration amounts to commercial blackmail. The learned Counsel for the applicant submitted that this mark virtually terrorizes even the bonafide applicants of marks like “MAYUR” which has nothing to do with “AYUR”. Admittedly, the sales figures relate to diverse goods and therefore the sales figures cannot be relied on to prove distinctiveness of the mark. Class 3 products are being sold in the market in this name deceiving the consumer. He also referred to the various judgments.

 

8.         The learned Senior Counsel for the respondent raised initially an objection regarding the applicability of the new or old Act. It is a transferred matter and it has been filed under the old Act and will be dealt with as such but the reasons that are given hereinafter will make it clear that it will not be relevant whether it is under the old Act or the new Act.  The factors that vitiate the registration will be arrived at whether it is the old Act or the new Act.

 

9.         The learned Senior Counsel and the learned Counsel who appeared on behalf of the respondent submitted that the registration has been made for cosmetics and pharmaceuticals and therefore “AYUR” cannot be called descriptive and cited the example, “APPLE” for “COMPUTERS”. The learned Counsel submitted that the rectification application has been filed after 19 years during which period the respondents have been using the mark continuously and guarding it vigilantly. The learned Counsel submitted that although all decisions they had relied on arose out of interlocutory applications they would apply to the case since in the majority of trade mark cases decision in interlocutory applications concludes the dispute. The word “AYUR” () is invented. The Counsel also reiterated that the respondent’s products have no ayurvedic quality. The learned Counsel submitted that the issue of deception and confusion cannot be seen in vacuum. It must be seen in comparison. It was submitted that the respondent is the prior user and therefore Section 12(1) and 11(6) will apply.  The learned Counsel also submitted that there is a huge difference between opposition and rectification. In rectification proceedings it is for the person who challenges the mark to prove that the mark deserves to be rectified. While in opposition proceedings, it is for the person who applies for the mark to prove that the mark deserves to be registered.

 

10.       We have heard both the Counsel and gone through the voluminous records. We will only refer to that which is necessary. We are of the opinion that in public interest the word “AYUR” shall not remain in the register. We are unable to understand how, regardless of how the word is pronounced, the Registrar allowed the registration.

 

11.       According to the respondent “AYUR” is an invented word. The respondent has spelt “AYUR” with a short ‘A’ in Hindi but there is no difference when it is written in English. When a customer reaches out for a “AYUR” product he is not likely to scrupulously look whether it is the shortened ‘A’ or the lengthened ‘A’. Nor is he likely to pronounce it so carefully, nor will the shopkeeper notice the difference. The respondent has referred to the numerous opposition proceedings to show how it is protecting its mark. But we are of the opinion that the numerous opposition proceedings indeed show that the traders and the manufacturers and service providers are bonafide users of the letters ‘AYU’ and ‘AYUR’ which have been used are ever since the discipline of ayurvedic medicine was evolved in India. All that it shows is that these are marks which have been adopted bonafide. No one would have ever thought that these letters which are in public domain and generic would ever be appropriated by a single person. These numerous proceedings also show that a word used widely in India for several thousand years is now blocked by the respondent. This mark should not have passed the threshold of absolute ground for Refusal of registration under Section 9 of the Act and the lower bar of relevant grounds for refusal of registration under Section 11 of the Act.

 

12.       To add insult to injury the respondent has maintained that the products are not ayurvedic products and did not have ayurvedic quality.  An ordinary man or woman who reaches out to buy a product which calls itself “AYUR” will naturally think that it has been made out of some ayurvedic formula. So the respondent’s mark is nothing but plain deception. On the other hand, if the product is actually an ayurvedic preparation then the word “AYUR” will be descriptive and therefore cannot be granted registration.  It is really a Catch-22 situation for the respondent.  The mark must go.

 

13.       We are astonished by the claim that “AYUR” is an invented word.  An invented word has no meaning, for example, “XEROX” or “KODAK”  They were not dictionary words and they were adopted and they have the highest degree of distinctiveness even at the inception. They are not marks which acquired distinctiveness by the passage of time. On the other hand, a mark which is claimed to have acquired distinctiveness is a weaker mark which creates a strong association in the consumer mind with the product by prolonged consistent use which has to be proved. As the Chancery Court remarked in the “TOFFEE TREAT” case (cited infra), however long the word “Soap” is used as a mark for soap, it will not acquire distinctiveness. The respondent can use the word “AYUR” or “AYU” from today till eternity but the purchasing public will still associate it with AYURVEDA or ‘life’ and not to any particular manufacturer.

 

14.       We would have liked to extract all the 452 marks that are opposed by the respondent which are available in the tabular column given by the applicant. Some examples are given here only to indicate how detrimental and injurious to public interest the continuance of the mark in the Register will be. The respondent has opposed AURA, SUPER MAYUR, AZUR, AURI, MAYOR, AYUTKA, AYURUH, AYERA, AVIR, AURUOLA, A-YOUR, AYUS, AYUSH.  It is as if no one can use the letters “AUR” in their mark or in conjunction with each other or with other letters without being dragged into litigation by the respondent. The respondent has also dragged to litigation, persons like Ayur Research, Ayur Food Private Limited, Kerala Ayurvedam, Dr. Yogi Ayur Lab. Ayur Vigyan Rejuvenation Centre, Green Ayur Hospital , Ayur Lab Herbal Private Limited.  It is not necessary for us to refer to the various marks but we want to underscore the stranglehold that the respondent has exerted on the mark. It is extremely unhealthy for commerce if the respondent’s mark remains as such on the register.

 

15.       The Government recently celebrated an “AYUSH” function – the acronym for ‘A’ for AYURVEDA, ‘U’ for UNANI, ‘S’ for Siddha and ‘H’ for  Homoeopathy to increase awareness in alternative medicine.  Going by the track record, the respondent, might very well seek an injunction against the Government for using the word “AYUSH”. AYUSH is the seal of approval of quality given by the Government for its certificate under the Drugs and Cosmetics Act. We are not persuaded by the respondent’s contention that the applicant cannot have a grievance since they have stopped selling LEVER AYUSH product.  An affidavit has been filed by one Mr. Jayant Deshpande that they continue to sell LEVER AYUSH. In any event the respondent sued the applicant before the District Court at Kerala so applicant is aggrieved. The applicant has brought to the notice of this Board that a mark is wrongly remaining in the Register and that we should definitely take into account the public interest involved. We have not come across a case where public interest has ever loomed larger.  Even a small trader somewhere aspiring to sell modestly some ayurvedic product will be pounced upon by this respondent who has obtained registration of “AYUR” for admittedly non-ayurvedic product.  Malafide is writ large in the registration of the mark.  All the smaller traders perhaps succumbed to what the learned Counsel for the applicant rightly called the reign of terror.

 

16.       The applicant is correct in his submission that this is not a case where the mark needs to be compared with another mark. This is a mark which is publici juris and cannot be appropriated by any one. The applicants have enclosed the web extract of a research centre in Kerala providing ayurvedic services under the name Ayurnama, advertisements in Economic Times referring to Ayurveda and Ayur, brochure of Taj Connemera describing Ayur as ‘life’ and it is stated that  “AYUR”  denotes Ayurveda or just plain good health and life. This was shown to demonstrate that no one can appropriate AYUR as their own. The respondent’s products are also synthetic and not based on ayurvedic preparations. No one can directly or indirectly appropriate to himself the right to use a word which indicates one of the traditional systems of medicine Ayurveda.

 

17.       In addition to the submission, an IMRB report dated October 2009, has been filed. This study was undertaken to understand the meaning attributed by an ordinary consumer when the word “AYUR” was mentioned.  For recording the findings the method adopted is to have face to face interview from the age 25 to 55 and systematic random sampling procedure.  In the majority of the persons so interviewed, the association of “AYUR” was with “AYURVEDA”.  Retailers had also been interviewed who again said that “AYUR” was ayurvedic product or ayurvedic brand or words to that effect.  In addition to this report, the applicant has also filed affidavits from several persons who have said on oath that to them the word “AYUR” would denote Ayurveda or ‘life’ or some such connotation.  This was criticized by the learned Counsel for the respondent as to ‘who plays the piper causes the tune’.  Even if we give some weight to that aspect we are not able to totally ignore the professional report by the applicant and the number of affidavits of ordinary persons as also the evidentiary value of several persons calling themselves Kerala Ayurvedam or Ayur Vigyan Rejuvenation Centre, Ayur Hospital etc.  Apart from this it is also a fact that the Government itself adopted “AYUSH” acronym for the licences given. Therefore definitely on a cumulative consideration of the IMRB report, the affidavit evidence and the kind of service persons and service providers who have adopted the mark, the inescapable conclusion is that “AYUR” is a generic word.  It is not an invented word.  It belongs to the public.

 

 

18.       We will look at the judgments relied on by the respondents –

 

(i)                 1998 PTC (18) – Samsonite Corporation, Petitioner Vs. Vijay Sales, Respondents – Here the Court held that the survey was biased.

In the present case, in addition to survey they have also filed affidavit evidence and ultimately the decision is arrived at only by seeking evidence.

 

(ii)               PTC (Suppl).(1) 465 (Punj) – Kanwar Ayurvedic Pharmacy, Kanpur, Petitioner Vs. Registrar of Trade Marks and another, Respondents – This was a case where the mark was Vedana Nigrah Ras. It was cited by the respondent because four persons who were authorities on the subject had stated that the use of the impugned word was not as interpreted by the Registrar and in that case the mark was allowed to continue because it has remained long.

 

This can be distinguished since the word “AYUR” cannot be equated with “Vedana Nigrah Ras” and clearly the public will understand “AYUR” only as ayurveda or ayurvedic product and not as the respondent’s product.

 

(iii)             The respondent relied on AIR 1930 Lahore 999 – Unani Dawakhana, Appellant Vs. Hamdard Dawakhana, Respondent where the mark was “Sharbat Ruh Afza”. In this case it was held that though the words have a meaning it would not convey any meaning to the uneducated public.

 

In the present case all over the world there is interest in Ayurveda and Ayurvedic treatment and in particular the Indian consumer will certainly associate Ayurveda with Ayur.

 

(iv)              2004 5 SCC 267 –  Godfrey Philips India Ltd., Appellant Vs. Girnar Food & Beverages (P) Ltd., Respondent – In this case the Supreme Court really did not go into the question whether the mark is descriptive or not. They only reiterated the principle of law that a descriptive words will be entitled to protection if it had achieved secondary meaning.

 

AYUR has not acquired secondary meaning. So this does not help the respondent.

 

(v)                AIR 1962 Bombay 82 – J.L. Mehta and another, Petitioners Vs. Registrar of Trade Marks, Respondent – The mark is “Sulekha”. It was applied in connection with fountain pens. The High Court allowed “Sulekha” to be registered. In trade mark cases, decisions on well settled principles can be applied depending on the facts of the case.

 

In the present case, we have to repeat again that no one can claim that “AYUR” belongs to them alone and as was held in the “TOFFEE TREAT” case even 100 years of use of the mark for “Soap” will not give the registered proprietor the right to claim distinctiveness. 

 

(vi)              AIR 1996 Delhi 144 – Chhattar Extractions Ltd. and another, Appellants Vs. Kochar Oils Mills Ltd., Respondent – Here the mark was “Pakwan” and it was passing off.  The Court held that “Pakwan” means cooked food and not refined oil.

 

Here “AYUR” would indicate to the customer, ayurvedic preparation. If the respondent marketed ayurvedic preparation then the mark is descriptive.  If the respondent marketed non ayurvedic preparation, the mark is deceptive.  So whether heads or tails it is a no-win game for the respondent.

 

(vii)            AIR 1980 Delhi 180 – Registrar of Trade Marks, New Delhi, Appellant Vs. Hamdard National Foundation (India), New Delhi, Respondent – In this it was held that “SAFI” acquired a secondary meaning though it was descriptive.

 

In the present case, the affidavit evidence has been produced. This as well as the numerous newspaper items etc. and brochures would show that “AYUR” continues to mean “life giving”, “Ayurveda”, etc.

 

(viii)          Order No.72 of 2008 IPAB – Nitin P. Jain & Others, Applicant Vs. Titan Industries Limited, Respondent – The marks were “SONA” and “SONATA”.

 

On the facts of the case the decision does not apply.

 

(ix)              AIR 1985 Bombay 306 – A. Hami Brothers, Petitioners Vs. Hami & Co., and another, Respondents – The question was whether Section 9 can be brought into play to decide questions which arise under Section 32.  Here the Bombay High Court held that under Section 32 the mark would be valid after expiration of seven years unless it was registered in contravention of Section 11 and that when the challenge is one of violation of provisions of Section 9 then the complaint is not open for investigation in view of clear cut provisions of Section 32. The appellant seeks to distinguish itself by showing that they have invoked Section 56 and therefore we should examine whether the mark is wrongly remaining in the register.  The learned Counsel for the appellant also reiterated that the shadow of Section 9 clearly falls on Section 32.  Section 32(c) provides that a mark after seven years can be challenged if the mark was not at the commencement of the proceedings distinctive of the goods of the registered proprietor.  Distinctiveness is the spirit of Section 9.  Without distinctiveness, the mark cannot be registered. In the present circumstances the mark was registered under Part A. It is therefore that the learned Counsel for the applicant rightly said that the shadow of Section 9 falls on Section 32.  It is possible that a mark was descriptive at the time of registration but lost its distinctiveness and when the mark is sought to be rectified, then the applicant seeking rectification can invoke Section 32(c).  It is possible that a mark was distinctive at the commencement of the proceeding and continued to be so on the date when the rectification petition was filed.  Then obviously a rectification application will fail the test of Section 32(c).

 

In the case on hand, the respondent cannot claim that it was distinctive on the date of application because it was a proposed to be used mark Therefore what they should prove is that in the years that followed they had acquired distinctiveness and to see whether they have done so, we shall have to look to Section 9. Viewed from that perspective, the respondent has failed to prove distinctiveness on the date of the proceeding.  On the date of the application for registration and on the date of application for rectification and on all the dates to come “AYUR” will always and only be descriptive indicative of Ayurveda the ‘life’  and this position cannot change.

 

(x)                The respondent relied on AIR 1963 SC 449 – Amritdhara Pharmacy, Appellant Vs. Satya Deo Gupta, Respondent –  Here the marks are “Lakshmandhara” and “Amritdhara”. It was a case of infringement and acquiescence.

 

In the present case there is no acquiescence. We have already dealt with the question of deception.

 

(xi)             The respondent also cited Infosys case – (2011) 1 SCC 125 – Infosys Technologies Limited, Appellant Vs. Jupiter Infosys Limtied and Another, Respondents

This was cited by the respondent to show that the applicant was not an “aggrieved person”. On the contrary, the decision of the Hon’ble Supreme Court squarely indicates that under Section 56 the term ‘person aggrieved’ will be given a wider construction. 

 

(xii)      1970 (3) SCC 665 –  National Bell Co., Gupta Industrial Corporation, Appellants Vs. Metal Goods Mfg.Co.(P) Ltd. and another, Respondent – Here the Supreme Court explained the principle underlying the expression “commencement of proceedings” under Section 32(c) and the applicability of Section 9 after a lapse of seven years after the registration of the mark. On facts, in that case witnesses had been examined to prove that the offending mark had acquired distinctiveness and the word distinguished the goods of the respondent.

 

In the present case, the respondent has not led any evidence apart from the sales and advertisement figures without an auditor’s certificate. On the other hand, the applicant had led in affidavit of the general public all of whom had stated “AYUR” means ‘life’ or Ayurveda.

 

The respondent also referred to decisions to show that there is delay in filing the rectification petition. We are not referring to them since there is no delay.

(xiii)     The respondent relied on OHIM 2010 reference number 3034C (Decision of the Cancellation Division) – Three-N-Products Private Limited Vs. Emami Limited – Here the Board concluded that “AYU” is deceptively similar to “AYUR” but what is relevant in this case for the respondent is cited to support his registration.

 

It was the respondent’s submission before the foreign Courts that AYURVEDA means “science of life” and the prefix “AYU” will inform Indian consumers about the nature of the goods. This actually destroys the case of the respondent.

 

(xiv)     2000 (20) PTC 489 Del – Three-N-Products P Ltd. Vs. Pardesi General Store & Ors., Defendants – Here the learned Judge held that “AYUR” as a Hindi word means traditional Indian science of health or medicine and categorically stated that “Ayur” is a generic name.

 

(xv)      2002 (24) PTC 518 (Delhi) – Three-N-Products Pvt. Ltd., Petitioner Vs. Yashwant  and Ors, Respondents .- This is a case that has been anchor-sheet for the respondent.

This was an interim application and the learned Judge held that the observations were tentative in nature and there are other judgments which were held to the contrary.

 

(xvi)     2006 (32) PTC 402 (IPAB) – Three-N-Products (P) Ltd., Applicant Vs. Jocil Ltd. & Ors., Respondents – The mark was rectified because of non-renewal and has no application.

 

(xvii)    2007 34 PTC 515 (Cal) – Three-N-Products (P) Ltd. Vs. Karnataka Soaps & Detergents Ltd. & Anr., Respondents – This was a passing off action in which the respondent herein succeeded being a senior user.

 

The question that is raised in the present case did not come up in that case. The question is whether any one can claim as his own “Ayu” and “Ayur”.

 

(xviii)   2007 35 PTC 361(Del) – AyurherbsPharmaceuticals Private Limited Vs. Three-N-Products Private Limited, Respondent – This was again a passing off and the issue of registrability of the word  “AYUR” was not considered

 

(xix)     2009 40 PTC 275 (IPAB) – Three-N-Products Private Limited, Applicant Vs. Amalco Herbal Products, Respondent – Here the respondent sought the rectification of “Ayur Green”.  “Ayur Green” was rectified but the IPAB held that “AYUR” was a generic word.

 

It supports actually the applicant.

 

(xx)      2009 41 PTC 689 (Delhi) – Three-N-Products Private Limited Vs. Emami Limited, Respondent – In this case the respondent stopped “Ayurcare” from being used with “Himani”.

Here it was held that the word “Ayur” hints at an association with Ayurveda. It does not support the respondent. Until 2009 there is nothing to indicate the acquiescence or distinctiveness. The word “Ayur” continues to have its primary meaning.

 

19.       Now we look at the decisions given by the appellant –

 

(i)                 CDJ 2001 SC 221 – Cadila Health Care Ltd., Vs. Cadila Pharmaceuticals Ltd. – The applicants cited “Cadila”.  It was cited since the Supreme Court has pressed that there was more potential harm if there is confusion in medicinal products than the ordinary customer product.

According to the applicant, the respondent was deceiving the customer by calling his goods “AYUR” though even according to them it was not Ayurvedic product.

 

(ii)               AIR 1960 SC 142 – Corn Products Refining Co., Appellants Vs. Shangrila Food Products Ltd., Respondents – In Corn Products case, the Supreme Court held that for a trade mark to acquire reputation among the general public – “…it should appear that the public associated that trade mark with certain goods…”

 

In this case the respondent has failed to prove the association since as per the evidence affidavit and as per the documentary evidence filed by the applicant, the public associated “AYUR” and ”AYUSH” with ayurvedic products and understand it to mean ‘life’

.

(iii)             1959   RPC page 283 – Electrix Ld.s Application for the Registration of Trade Marks – In this the mark that was discussed by the House of Lords was ‘Electrix’. The following observations were made –

 

‘”…neither in this speech nor in those of the other learned Lords was there suggested any qualifications of the general principle that the phonetic equivalent of an unregistrable word is itself unregistrable…”  “…It appears to me that, whether or not distinctiveness in fact was or can be acquired by “Electrics” of which there was of course no evidence, It would be a hopeless task to persuade the tribunal that it was not inherently unregistrable. From this it follows that the word “Electrix” cannot be registered.

 

The very fact that the respondent goes to great length to stress that his mark is the word “AYUR” (short ‘A’) clearly shows that “AYUR” (long ‘A’) is unregistrable.  From the decision of the House of Lords above which holds that the phonetic equivalent of an unregistrable word is itself unregistrable we find that “AYUR” whether pronounced with the short ‘A’ or long ‘A’ is plainly unregistrable.  We are in fact surprised how the Registrar overcame his initial doubt and granted registration.

 

(iv)              AIR 1970 SC 2062 – Hoffimann-La Roche and Co. Ltd., Appellant Vs. Geoffrey Manners and Co. Private Ltd., Respondent – It relates to passing off with regard to “Dropovit” and “Protovit”.  It was cited only for the exposition that if there is likelihood of sound confusion in the goods registration must be refused.

 

(v)                1940 RPC 137 – The Shredded Wheat Co. Ld. Vs. Kellogg Co. of Great Britain Ld. – This is the famous ‘Great Brits’ case decided by the House of Lords. An application was filed to justify the registration on the ground that the mark had not acquired distinctiveness and was not adapted to distinguish. They cited Section 3,9(5),11,32,35 and 40 of the provisions under  the Trade Marks Act.  An application to rectify was received. There was an appeal.  The appeal was allowed.  Against that there was an appeal to the House of Lords. The appeal was dismissed with costs.

 

The Shredded Wheat Co. Ld. had registered the mark “Shredded Wheat” in Class 42.  It was registered as a distinctive mark (Section 9, para (5) of the U.K. Act).  It was held that “the mark “Shredded Wheat” was not the name of an article made by a patented process, that the mark had reference to the character of the goods but had acquired a distinctive meaning…”  Kellogg Co. appealed. The House of Lords held that at the date of registration the mark had acquired no distinctiveness, there was no evidence and could be none, of the acquisition of secondary meaning in the absence of rival producers of the same mark. The House of Lords held that the words “Shredded Wheat” had been used descriptively and it must be decided whether there had been such a change of meaning of those words that the mark has become distinctive for the goods. The House of Lords considered the provisions of Section 9(5) and held that even if a descriptive name is proved to have acquired a distinctive meaning, it by no means follows that it ought to have been registered under Section 9(5) of the Act unless it is also “adapted to distinguish”.  The House of Lords held that oral testimony by members of the trade and public stopped short of establishing distinctiveness. The onus is on the party seeking to expunge the mark. Therefore, applying Section 9, the House of Lords ordered rectification.  In that case there was no other person using the same mark used for the same goods and therefore the House of Lords felt it was difficult to conclude that the trade mark has acquired a secondary meaning

 

In the present case over 450 persons in India want to use the letter (AYU) or (AYUR) in conjunction with other words because they know and the market knows that “AYUR” is generic.

 

(vi)       1990 RPC page 535 – The Solid Fuel Advisory Service Service Mark – In this case the mark was “The Solid Fuel Advisory Service”. The Trade Marks Registry held that it has direct reference to the service claimed and was wholly descriptive and other bodies might wish to provide similar services and registration could restrict their legitimate freedom to describe it. They cited from the “Electric Lt.” case above –

“it is well settled that registration should not be granted in respect of any word the registration of which as a trade mark would give the applicant a monopoly of, or hamper or embarrass other traders in their use of descriptive words or expression of which they might reasonably and properly wish to make use in the ordinary course of their business”

 

Ayurvedic treatment and medicine have now become quite popular not only in India but elsewhere. People resort to ayurvedic treatment or massages.  It is not restricted to India and there are many resorts which specifically cater to such services. As for example, the resort at Kumarakom which was mentioned by the learned Counsel for the applicant. Granting a monopoly to the respondent, would stop all such services and would render all such goods vulnerable to attack by the respondent who has secured registration of a mark which is clearly unregistrable.

 

(vii)      1909 RPC Vol 26 page 837 – In the matter of an application by Joseph Crosfiled & sons, Ld. to register a trade mark – This is the famous “Perfection” case. The applicant had registered “Perfection” as a trade mark for common soap where they held that “Perfection” was not a distinctive mark, notwithstanding the user of the words by the applicants in the past and was not adapted to distinguish the same.  The very fact that so many persons have registration of marks which contain “AYU” or “AYUR” is clear evidence that no one associates “AYUR” to signify the respondent alone.

 

We are not aware that in some decisions it has been held the vigilant protection by the registered proprietor of his mark is an indication of the proprietorship of the mark. We cannot however accept it as a stand alone factor to hold the particular person as a registered proprietor.  That might be an additional piece of evidence which we will take into account to form our conclusion. In this case we need not look any further from the mark itself. The mark “AYUR” is plainly unregistrable even if he uses it for 100 years. The fact that there are so many people claiming the registration clearly show that everyone is of the impression that the words “AYUR” and “AYUSH” are in the public domain available for adoption in conjunction with some other word which will make their mark distinguishable or registrable.

 

In the present case an unregistrable mark has been registered without a disclaimer and for goods contrary to public perception. It has been used in non-ayurvedic preparations.

 

(viii)     RPC 1961 page 331 – Tubegauz Trade Mark – This mark is “Tubeguauz”.  This refers to the Perfection Case (1909) 26 RPC 561 and 837 and the Electrix Ltd. case.

 

(ix)              420 F.2d 1248 – American Aloe-Corporation, Plaintiff-Appellant Vs. Aloe Crème Laboratories, Inc., Defendant-Appellee – The challenge was to the validity of the mark “ALO”.  It came up before the 7th Circuit.  “ALOE” is a generic name of a large genus of succulent plant.  The Court held that in the absence of a strong showing of secondary meaning, the registration cannot be granted for a generic name.  Defendant contended that it is not marketing “ALOE” as such, but is selling cosmetics containing Aloe. The Court held that by using a phonetic equivalent of the generic name as a sole common and distinguishing mark of the product the defendant invited confusion.  In fact in that case a question was raised regarding violation of anti trust laws because of the mark. The Federal Court remanded to the Trial Court to conduct the case.

 

(x)                In the High Court of Bombay, Appeal NO.548 of 2007 in Notice of Motion No.3459 of 2004 in Suit No.3419 of 2004 – Schering Corporation and Another, Appellants Vs. Messrs. United Biotech (P) Ltd. and Another, Respondents – The mark was “NETROMYCIN”.  It is a case of passing off.

 

(xi)              RPC 1978 Page 397 – SAFEMIX Trade Mark – The mark here was “SAFEMIX” for thermostatically-controlled valves. An application for registration was received. Since it was held that “SAFE” and “MIX” were both dictionary words, the combination did not render it as an invented mark, the mark had direct reference to the character and quality of the goods and that it was descriptive, lacking any degree of inherent distinctiveness and was unregistrable.

 

(xii)            1996 RPC page 281 – British Sugar PLC Vs. James Robertson & Sons Ltd. – Here the mark was “TOFFEE TREAT”.  It is in this case the Chancery Court held that no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap, the word would not be distinctive of his goods.  He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark (Emphasis supplied). It is in this judgment that the Chancery Court quoted –

 

“In 1909 Sir Herbert Cozens-Hardy MR said:

 

Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure.”

In this case what the respondent has done is to enclose a part of the vast space of all Indian languages for himself. We think “AYUR” has the same connotation in any Indian language and not in Hindi or Sanskrit alone. Right through the length and breadth of our country if we mention the word “AYUR” the customer will know that we are referring to something related to ‘life’ and something related to ‘ayurvedic’ product and it is this word that the respondent wants to capture and keep imprisoned.

 

(xiii)          A.P.O. No.248 of 2008 in C.S. No.204 of 2007 – Three-N-Products Private Limited Vs. Emami Limited. and A.P.O.T. No.35 of 2008 in C.S. Nio.204 of 2007 – Emami Limited Vs. Three-N-Products Private Limited – The Division Bench of the Hon’ble High Court of Calcutta held that –

 

“…At the same time, we are of the view that the word “Ayu” or “Ayur” cannot be said to be the particular invented words of the plaintiff for denoting its goods bearing “no meaning”. The plaintiff cannot claim exclusive right over the word “Ayu” meaning “longevity” and similarly, over the word “Ayur” denoting its connection with Ayurveda…”

This squarely applies.

 

(xiv)     In 2000 (20) PTC 489 – Three-n-Products (P) Ltd., Plaintiff Vs. Pardesi General Store & Ors., Defendants – The two marks were “Ayurslim Tablets” and “Ayur Dia Slim Tumbler”.  The respondent herein was the plaintiff.

The learned Judge clearly held that the intended purchaser is not going to be swayed by the phonetic difference and that the defendant has clearly shown that “Ayur” is a Hindi word which is defined to mean the traditional Indian Science of health or medicine. 

 

20.       Finally, we come to an admission of the respondent. In “AYUR SAMACHAR” in 2004, the company profile reads as follows:

 

“AYUR’ means – Life. Ayur Herbal seeks to provide Indian  women with products made from natural extracts. AYUR began in 1985, with a single product, a hair removing wax. Buoyed with success, they decided to enter both the herbal hair-care and skin-care market by rooting their products in Ayurveda.”

 

This actually seals their case. In view of the above the respondents cannot contend that “Ayur” is an invented word.

 

21.       Numerous documents have been filed by both sides but only a few of them have been relied on.  We earnestly request the members of the Bar to file as evidence only those documents which are necessary, relevant and admissible. Both ecological consideration and consideration of convenience persuade us to make this request.

 

22.       Finally we are of the opinion that –

 

(a)       The respondent has admitted “AYUR” means ‘life’. Therefore their contention that “AYUR” is an invented word is unacceptable;

(b)       The respondent claims that the mark is used for non-ayurvedic product. If so, the use of “AYUR” is deceptive since the ordinary consumer will think it is an ayurvedic product;

(c)        Contrarily the respondent also claims it is rooting their products in Ayurveda. If so, use of the mark is descriptive and cannot be accepted;

(d)       “AYU” and “AYUR” are words belonging to the public domain; no one can appropriate it exclusively;

(e)       Admittedly, “AYUR” means life and the words are associated in the public consciousness with ‘Ayurveda’ and ‘healthy life’ and no one can appropriate it to oneself;

(f)         The respondent has not proved that the mark has acquired distinctiveness and in fact such a mark can never acquire distinctiveness.  It is like using the mark “Soap” for soap;

(g)       The applicant on the other hand has produced evidence to show that “AYUR” means ‘Ayurveda’ to the consumers or it means ‘life’ or ‘ayurvedic’ product, so the mark is likely to cause confusion and deception;

(h)        The respondent has stated before the English Court in the decision of the Cancellation Division, that ‘Ayurveda’ means ‘science of life’. Therefore the respondent has misled the Registrar. This mark shall not remain on the Register;

(i).        The mark cannot pass either the test of Section 11 nor the test of Section 9 of the Act; and

(j)         Public interest would be harmed if this mark remains in the register thereby preventing other persons in our country access to a common Indian word denoting an ancient system of medicine.

 

23.       For all these reasons, the marks bearing Nos.421919 in Class 3, 504095 in Class 5, 691956 in Class 3, 691957 in Class 3 and 691958 in Class 3 are removed. The applications TRA/138/2004/TM/DEL (CO No.6/2003), TRA/139/2004/TM/DEL (CO No.8/2003), TRA/116 to 118/2004/TM/DEL (CO No.9 to 11/2003) are allowed with costs of Rs.1,00,000/- in aggregate, that is, @ Rs.20,000 for each of the rectification petition.

 

 

 

(S. Usha)                                                                      (Justice Prabha Sridevan)

Vice-Chairman                                                             Chairman

 

 

 

 

 

(This order is being published for present information and should not be taken as a certified copy issued by the Board.)

 

 

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