DURGA DUTT SARMA Vs. NAVARATNA PHARMACEUTICAL LABORATORIES

JUDGEMENT

(1.) The question arising for decision in the appeals is when a word or combination of words commonly used would be acquired as the trade mark of a person. The same issue arises for adjudication in the petition for the rectification of the Registers of Trade Marks. The two appeals, Nos. 233 and 301 of 1959, are against the decree by the District Judge, Ernakulam, in O.S. No. 233 of 1951 The plaintiff in the aforesaid action is a registered firm called the Navaratna Pharmaceutical Laboratories, and has prayed against Pandit Durga Dutt Sharma, a resident of Jullunder City, a perpetual injunction and damages. The injunction is to restrain the defendant, hereafter referred to as Pandit Sharma, and others under him, from advertising, selling, or dealing in any preparation or preparations containing the term Navaratna, or any similar term; to restrain Pandit Sharma from trading under any name and style containing the term Navaratna, or any other similar term; and to restrain him from infringing the firms registered trade mark Navaratna. The damages claimed is Rs. 2,960-12-0, that being the total loss averred to have been caused by Pandit Sharmas wrongful acts. The petition connected, for hearing with the two appeals, is under S.46, read with S.72 of the Trade Marks Act, 1940, by the defendant, and had been presented to the High Court on February 26,1952, which is after the suit was instituted before the District Judge. Thereby, Pandit Sharma had sought rectification of the Registers of Trade Mark at Trichur in this State and at Bombay, by the word Navaratna itself, or in combination with other words being removed, due to the earlier registrations not being in accordance with the Trade Marks Act, 1940

(2.) The circumstances culminating in the aforesaid litigations, can be shortly narrated. One Dr. Sarvothama Rao, who is still a partner of the plaintiff firm, founded the pharmaceutical concern, that was called Narvaratna Pharmacy, in May 1926; & the word Navaratna appears to have since then been associated with all the medicinal, pharmaceutical, and other preparations of the concern. He took in successively two partners, and from January 1, 1945, the firm name was changed from Navaratna Pharmacy to Navaratna Pharmaceutical Laboratories. The latter has since been used as the firm name, and another partner had been admitted in 1950. The plaintiffs case in the original suit is that Dr. Sarvothama Rao had registered by declaration the word Navaratna and the name Navaratna Pharmacy before the Registrar of Assurances, Calcultta, on December 18, 1928. The case further is that the word Navaratna, by constant use from 1926, had acquired a distinctive and secondary significance by its association with the firms medicinal & other preparations. It is admitted in the case that the firm later had registered Navaratna and Navaratna Pharmaceutical Laboratories, as its two trade marks under the Cochin Trade Marks Act, Act XIX of 1949. The relevant documents are Exts. J (1) and J (2) and both are of the year 1949. The provisions of the aforesaid Act were similar to those of the Trade Marks Act, 1940, Act V of 1940; and under S.78(A) of the former, like S.82 (A) of the latter, reciprocal recognitions of the registered trade marks were provided. Both Governments had issued the necessary notifications after the amended sections came into force on April 18, 1946; with the result that the plaintiff firm had, under S.82(A) of the Trade Marks Act, 1940, applied for registration of the word Navaratna in Bombay and other places, and informed the Trade Marks Registry that Navaratna was a proprietary name and appeared on all the firms products. The Registrar of Trade Marks advertised in accordance with S.15(1) of the Trade Marks Act, and no opposition to the registration of the marks having been received, they were registered To conclude this narration concerning registration of its trade marks by the firm, the position stated earlier continued tilt April 1, 1950; and, thereafter, the Part B States (Laws) Act, No. III of 1951, extended the Trade Marks Act, 1940, to what were then Part B States, repealing the Cochin Act. After the repeal, the State Trade Marks Registry was closed from November 30, 1950, and the marks under the repealed Act were merged in the Central Act.

(3.) In 1946 Pandit Sharma also had asked for the words Navaratna Kalpa to be registered in respect of all his pharmaceutical preparations; and, when the said application was advertised, the plaintiff firm on April 1, 1950, opposed the registration on the grounds of, according to the applicants own word, Navaratna being descriptive and there being no satisfactory evidence of its having acquired distinctiveness. The registration asked by Pandit Sharma was, on that objection, not allowed; and, thereafter Pandit Sharma moved the Registrar of Trade Marks, Bombay, for removing the word Navaratna from the Register of Trade Marks on the very ground. This application was also disallowed, because Suit No. 233 of 1951 asking for an injunction, had by then been filed in the District Judges Court, and S.72 (A) of the Trade Marks Act, 1940, provides that if any suit or other proceedings concerning the trade mark in question be pending before a High Court or a District Court, the application for rectification should be made to that High Court, or to the High Court within whose jurisdiction that District Court is situated. Pandit Sharma, therefore, filed O.P. No. 19/1952 in the Travancore-Cochin High Court, claiming the word Navaratna to be ordinarily used by Ayurvedic physicians for medicines prepared out of the nine precious stones, to be descriptive of quality and contents of the nine stones, and to be a word common to the Ayurvedic system of treatment. The adjudication of the petition been postponed till the decision in the firms suit; and due to the common issues, been connected with those on appeals from the decree in the firms suit.