THE REGISTRAR OF TRADE MARKS vs. ASHOK CHANDRA RAKHIT LTD.

Case Analysis

THE REGISTRAR OF TRADE MARKS vs. ASHOK CHANDRA RAKHIT LTD.

April 22, 2025

A) ABSTRACT / HEADNOTE

This landmark Supreme Court judgment in The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., reported in [1955] 2 SCR 252, elucidates the discretion vested in the Registrar under Section 13 of the Trade Marks Act, 1940. The core issue revolved around the necessity and legality of imposing a disclaimer on the word “Shree”, which formed part of the respondent’s registered trade mark. The Court emphasized the Registrar’s role as the primary authority in applying judicial discretion grounded in sound legal principles. The ruling asserted that such discretion must not be interfered with unless it is shown to be exercised arbitrarily or without proper basis. The Court validated the disclaimer imposed by the Registrar, noting the respondent’s potential to unjustly claim exclusive statutory rights over a common term like “Shree”. This decision lays down vital jurisprudence on trademark registration, disclaimers, statutory protection, and discretionary powers of trademark authorities in India.

Keywords: Trade Marks Act, 1940; Trademark Disclaimer; Registrar’s Discretion; Judicial Review; Word “Shree”

B) CASE DETAILS

i) Judgement Cause Title: The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.

ii) Case Number: Civil Appeal No. 116 of 1953

iii) Judgement Date: 15 April 1955

iv) Court: Supreme Court of India

v) Quorum: Justice S.R. Das, Justice N.H. Bhagwati, and Justice Bhuvneshwar Prasad Sinha

vi) Author: Justice S.R. Das

vii) Citation: [1955] 2 SCR 252

viii) Legal Provisions Involved:

Section 13, Section 46(4), Section 76 of the Trade Marks Act, 1940
Relevant principles under Section 6 of the Act.

ix) Judgments Overruled by the Case: None

x) Case is Related to which Law Subjects: Intellectual Property Law, Trade Marks Law, Administrative Law

C) INTRODUCTION AND BACKGROUND OF JUDGEMENT

This case arose from an appeal filed by the Registrar of Trade Marks against the judgment of the Calcutta High Court which had reversed the Registrar’s order inserting a disclaimer on the word “Shree” in the respondent’s trade mark. The trademark at issue was originally registered by the respondent company, Ashok Chandra Rakhit Ltd., under No. 3815. The Court critically analyzed the discretionary powers of the Registrar under Section 13 of the Trade Marks Act, 1940, dealing with parts of marks that are non-distinctive or common to trade. The Registrar, observing that the word “Shree” was a religious symbol and in common usage, directed the entry of a disclaimer. This was reversed by the High Court. The Supreme Court, however, upheld the Registrar’s decision.

D) FACTS OF THE CASE

In 1897, Durga Charan Rakhit adopted a device mark for marketing ghee, which prominently featured the word “Shree” in bold Bengali and Devanagari scripts. Following his insolvency, the mark passed through legal succession and eventually vested in Ashok Chandra Rakhit Ltd., a private company incorporated in 1932. The trademark included artistic depictions and textual components. It was registered in India in 1942 under the Trade Marks Act, 1940.

Upon initial examination, the Registrar proposed that the company disclaim the word “Shree”. The company objected, emphasizing that “Shree” was essential to the identity and commercial value of the product. Nonetheless, in 1950, the Registrar directed the insertion of a disclaimer stating: “Registration of this Trade Mark shall give no right to the exclusive use of the word ‘Shree’.”

The respondent company appealed to the Calcutta High Court, which ruled in its favor and set aside the Registrar’s order. The High Court reasoned that no exclusive claim over “Shree” was being asserted, and the disclaimer was unnecessary. The Registrar then appealed to the Supreme Court.

E) LEGAL ISSUES RAISED

i) Whether the word “Shree” used in a trade mark, which is common in religious and cultural use, is capable of exclusive proprietary claim by a single trader?

ii) Whether the Registrar of Trade Marks, under Section 13 of the Trade Marks Act, 1940, rightly exercised discretion in directing a disclaimer?

iii) Whether the High Court can substitute its own discretion over that of the Registrar, particularly when the Registrar has acted within legal bounds?

F) PETITIONER/APPELLANT’S ARGUMENTS

i) The counsels for the Petitioner/Appellant submitted that the word “Shree” is a common religious symbol, widely used across Hindu households, and as such, lacks distinctiveness. Hence, it cannot be appropriated by a single trader as part of a registered trademark[1].

ii) They stressed that Section 13 empowered the Registrar to direct a disclaimer where a part of the mark was either non-distinctive or common to trade. The presence of either condition activated the Registrar’s jurisdiction, and he properly exercised discretion[2].

iii) The appellant argued that granting exclusive statutory rights over such a common term would not only be unfair to other traders but could also give rise to abusive infringement litigation, without the need for the claimant to prove actual confusion or deceit as required in passing off actions[3].

iv) Reliance was placed on In re Smokeless Powder Co.’s Trade Mark, [1892] 1 Ch. 590, and Greers Ltd. v. Pearman & Corder Ltd., [1922] 39 RPC 409, where Courts discouraged monopolistic claims over common terms.

G) RESPONDENT’S ARGUMENTS

i) The counsels for the Respondent submitted that they had not asserted any exclusive right over the word “Shree”, and hence, there was no need for a disclaimer[4].

ii) They argued that the trade mark was a composite artistic device, not a mere textual mark. The overall impression was distinctive and had been built through extensive and long-standing use since 1897, giving rise to common law rights in the mark as a whole[5].

iii) They invoked the principle laid down in In re Cadbury Brothers’ Application, [1915] 2 Ch. 307, which discouraged blanket disclaimers imposed based solely on administrative practice, without contextual consideration.

iv) The company emphasized that imposition of a disclaimer could weaken their position in enforcement of the mark and harm the goodwill associated with their branding[6].

H) RELATED LEGAL PROVISIONS

i) Section 13 of the Trade Marks Act, 1940: Empowers the Registrar to require a disclaimer when parts of a trademark are not separately registered or are non-distinctive.

ii) Section 6(3) of the Act: Defines when a mark is deemed to be adapted to distinguish.

iii) Section 46(4): Allows the Registrar to suo motu rectify the Register in the interest of the public or trade integrity.

iv) Section 76: Provides for appeals to the High Court against Registrar’s decisions.

I) JUDGEMENT

a. RATIO DECIDENDI

i) The Supreme Court held that the Registrar was right in imposing the disclaimer. The term “Shree” was a religious and cultural symbol not adapted to distinguish any one trader’s goods, thereby satisfying the statutory criteria under Section 13(b)[7].

ii) It was held that mere inclusion of a common term in a device mark does not grant a statutory monopoly unless that term is distinctive per se. Therefore, disclaimer is both justified and necessary to prevent unjust statutory exclusivity[8].

iii) The Court clarified that High Courts should not interfere with discretionary decisions of the Registrar unless they are manifestly arbitrary, relying on Sharp v. Wakefield, [1891] AC 173, and Eno v. Dunn, [1890] 15 AC 252.

b. OBITER DICTA

i) The Court observed that disclaimer affects only statutory rights, not the common law rights a party may have under torts like passing off or under criminal law under Section 486 of IPC.

ii) It reaffirmed that a registered trade mark does not guarantee monopoly over every component of the composite mark.

c. GUIDELINES

A Registrar must base disclaimer decisions on statutory criteria, not mere administrative uniformity.
High Courts reviewing Registrar decisions must respect the Registrar’s primary jurisdiction and interfere only where discretion is improperly exercised.
Trade mark owners must not attempt to monopolize common religious or cultural expressions under the guise of registration.

J) CONCLUSION & COMMENTS

The judgment in The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. marks a vital judicial pronouncement that draws a balance between individual trademark rights and public interest. It safeguards religious and culturally significant words like “Shree” from being monopolized under the Trade Marks Act. The ruling also affirms the legitimate discretion of administrative authorities and cautions the judiciary against unwarranted interference. The judgment ensures the uniform application of trademark registration norms and prevents abuse of statutory rights through broad interpretations of trademark scope. It remains a critical precedent in shaping India’s trademark jurisprudence.

K) REFERENCES

a. Important Cases Referred