Case: GTC Industries Ltd., Bombay Vs Godfrey Philips India Ltd., Bombay. Trademark Tribunal

CounselFor Appellant: Mr. Mohan Dewan, Advocate of Dewan & Co.
JudgesT. R. Subramanian, DRTM
IssueTrade and Merchandise Marks Act, 1958 - Section 9
Citation1988 (8) PTC 186 (Reg)
Judgement DateJune 13, 1988
CourtTrademark Tribunal

Judgment:

T. R. Subramanian, DRTM

On 10th June, 1982 an application was filed being Applicantion No. 291567 by Godfrey Phillips India Limited, Chakala Post Office, Box No. 7354, Andheri, Bombay -- 400058 (hereinafter referred to as the Applicants) seeking registration of a trade mark in Part A of the register in respect of "Tobacco, raw or manufactured, cigarettes, cigars, smoker's articles included in class 34". The mark comprises of the words "REAL SMALL" and was proposed to be used. The application was accepted subject to association with Regd. Trade Mark No. 1833 and advertised in the Trade Marks Journal No. 873 dated 16-10-1986 at page 433.

On 17-12-1985 a notice of opposition was filed by GTC Industries Limited, of Tobacco House, Vile Parle, Bombay -- 56 (hereinafter referred to as the opponents) objecting to the registration of the above trade mark on the ground inter alia.

That the mark "REAL SMALL" is purely descriptive of the size of the goods such as cigarettes, cigars, smokers articles etc. and is therefore neither adapted to distinguish the goods in respect of which the applicants are seeking registration thereof.

That the applicants have deliberately suppressed the fact that the words REAL SMALL were expressly disclaimed in their associated trade mark No. 1833.

That in view of the fact that the words "REAL SMALL" were as far back on 8th July, 1942 when the associated trade mark No. 1833 was registered has been disclaimed it could not acquire any distinctiveness now as far as the applicants goods are concerned when it is proposed to be used by them.

That if registration is granted to the mark "REAL SMALL" it would amount to virtually certifying that the applicants goods are really small cigarettes, cigars etc., irrespective of whether the said cigarettes are really small or not.

That the applicants cannot claim proprietorship of purely descriptive expression such as "REAL SMALL" in respect of any goods.

Accordingly the applicants mark should be refused registration under Section 9, 11(a) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).

The applicants in their counterstatement denied the allegation of the opponents stated in

the notice of opposition and contended that the words "REAL SMALL" has no direct reference to the character or quality of the goods and is rather a combination of two words. They submitted that the trade mark applied for is not descriptive of the goods. They...

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