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CASE NO.:

Appeal (civil) 2360-2361 of 1999

PETITIONER:

Commissioner of Central Excise, Calcutta

RESPONDENT:

M/s. Emkay Investments (P) Ltd. & Anr,

DATE OF JUDGMENT: 08/12/2004

BENCH:

S.N. Variava , Dr. AR. Lakshmanan & S.H. Kapadia

JUDGMENT:

J U D G M E N T

Dr. AR. Lakshmanan, J.

Both the above appeals are filed against the common judgment passed by the

Central Excise & Gold (Control) Appellate Tribunal, Calcutta in Appeal Nos. E-246/92,

E-279/92 and Order No. A-593-594 CAL/98 dated 9.6.1998 reported in

2000(124)E.L.T.741. Both the appeals are against the same and common impugned

judgment. Both the above appeals are being disposed of by this common judgment.

Briefly stated, the facts of the case are as under:

The respondents-M/s Emkay Investments Private Limited and M/s Plyking who

are engaged in the manufacture of plywood classifiable under sub-Heading 4408.90 of

the Schedule Act, 1985. The said factory was visited by the Central Excise Officers

who found that the respondents are also using the brand/logo \026 "MERINO" \026 along with

the brand name \026 "Pelican" \026 on the plywood being manufactured by them and the

officers of the Department entertained a view that as the logo of "MERINO" is also

being shown on the plywood being manufactured by them, apart from their own logo of

"Pelican" and as the owner of the brand "MERINO" i.e. M/s. Merinoply and Chemicals

Ltd., is a large scale manufacturer of plywood not entitled to the benefit of small scale

exemption Notification No. 175/86-CE dated 1.3.1986, as amended, the respondents

were also not entitled to the benefit of the said exemption Notification in view of clause

7 of the same. The second respondent \026 M/s. Plyking is one of the traders from whose

premises plywood was seized by the officers of the Central Excise.

On adjudication, the Commissioner of Central Excise, Calcutta vide his

impugned order held that the logo indicating "MERINO" in a specific manner was the

brand name used by M/s. Merinoply and Chemicals Ltd. Who were not eligible for the

grant of benefit of Notification No. 175/86-CE and as such denied the benefit to the first

respondent firm and accordingly confiscated the seized plywood. The officers also

confiscated 223 pieces of plywood from the business premises of M/s Plyking \026 the

second respondent herein. The respondents as appellants contended before the

authorities that though the word "MERINO" is written in the same style as written on the

plywood manufactured by M/s Merinoply and Chemicals Ltd., nevertheless the same

will not imply any relation of goods by the respondents under the brand name of

"MERINO" . They also submitted that the brand name of M/s Merinoply and Chemicals

Ltd. is "TUFFPLY" and "MERINO".

The Departmental representatives countered the arguments of the respondents

by arguing that "MERINO" is the brand name and logo registered and owned by M/s

Merinoply and the affixation of the same on the product would disentitle the

respondents firms from the benefit of Notification in terms of clause 7 read with

Explanation VIII as M/s Merinoply and Chemicals Ltd. being a large scale unit, are not

entitled to the exemption Notification No. 175/86-CE, clause 7 would be attracted and

the respondents firms would become ineligible for exemption.

The Commissioner of Central Excise by his order dated 31.3.1992 ordered

confiscation of seized goods. The respondents herein filed appeals before the CEGAT

against the order of the Commissioner. The CEGAT, by the impugned order, allowed

the appeal filed by the respondents herein. Aggrieved by the said order, the

appellants preferred these two appeals.

We heard Mr. G.E. Vahanvati, learned Solicitor General, appearing for the

appellant and Mr. C. Hari Shankar, learned counsel, appearing for respondent No.1.

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Respondent No.2 did not engage a lawyer to represent their case. They sent their

counter affidavit by post.

The dispute, in the instant case, is as to whether the respondents who are

manufacturers of plywood under their own brand name "Pelicon" have made

themselves disentitled to the benefit of small scale exemption Notification No.175/86-

CE by using a logo indicating "MERINO" on their products along with their brand name.

The next question which arises is as to whether the markings or inscriptions should be

considered as the brand name of M/s Merinoply and Chemicals Ltd. and will come

within the mischief of Clause 7 read with Explanation VIII of the Notification, as

contended by the Department. Clause 7 reads as follows:

"The exemption contained in this Notification shall not apply to

the specified goods where a manufacturer affixes the specified goods

with a brand name or trade name (registered or not) of another person

who is not eligible for the grant of exemption under this Notification."

Explanation VIII of Clause 7 reads as follows:

""Brand name" or "trade name" shall mean a brand name or

trade name whether registered or not, that is to say a name or a mark,

such as symbol, monogram, label, signature or invented word or

writing which is used in relation to such specified goods for the

purpose of indicating, or so as to indicate, a connection in the course

of trade between such specified goods and some person using such

name or mark with or without any indication of the identity of that

person."

Mr. G.E. Vahanvati, learned Solicitor General, submitted that the impugned

goods admittedly contained the registered logo "MERINO" belonging to and owned by

M/s Merinoply and Chemicals Ltd. Thus it was a clear case where the impugned

goods were admittedly affixed with registered logo/trade mark of the other person not

eligible to S.S.I. exemption. According to the learned Solicitor General, the CEGAT

erred in not appreciating that to attract provision of clause 7 of Notification No.175/86-

CE, it is sufficient that product contained a trade mark/logo of another ineligible person

which was fully satisfied in the present case and whether the product also contained a

brand name/trade name/ logo of the manufacturer would not and cannot alter such

position. Arguing further, learned Solicitor General, contended that the interpretation of

Explanation VIII as advanced by the Tribunal does not appear correct in law and fact. It

was imperative that by using the registered logo "MERINO" belonging to M/s Merinoply

and Chemicals Ltd. on their own products, the first respondent herein, M/s Emkay

Investments Ltd. fulfilled the purpose of indicating a relation between the said products

and the logo owner so as to influence the trade and, therefore, the provision of

Explanation VIII were fully satisfied so far as the present case was concerned. Learned

Solicitor General also submitted that the exception or exempting provision in taxing

statute should be construed strictly and does not open to the Court or to the Tribunal to

ignore conditions prescribed in the exemption Notification.

In support of his submissions, learned Solicitor General, relied on the following

judgments:

1. B.H.E.L. Ancillary Association vs. Collector of Central Excise,

1990(49) E.L.T. 33 (Mad.)

2. Commissioner of Central Excise, Trichy vs. Rukmani Pakkwell

Traders, 2004(165) E.L.T. 481(S.C.)

3. Commissioner of Central Excise, Chandigarh-I vs. Mahaan

Dairies, 2004(166) E.L.T. 23(S.C.)

4. Commissioner of Central Excise, Chandigarh-II vs. Bhalla

Enterprises, 2004(173) E.L.T. 225 (S.C.)

Mr. Hari Shankar, learned counsel appearing for respondent No.1 submitted that

clause 7 read with Explanation VIII of the Notification does not make a registration or

otherwise of the brand name or trade name, a relevant factor and that it is not sufficient

to find a portion of the symbol or monogram of the other person on the product to oust

them from the benefit of Notification or to bring the goods within the ambit of

Explanation VIII. He would further argue that the Tribunal by a comparison of the

markings found that the same are entirely different except the use of the word

"MERINO" in between the respondents' own brand name and that the respondents'

brand name "Pelican" has been clearly marked and their logo in the shape and style \026

'encircled Bird' \026 has been put on the product and comparing the same with the

markings put on their plywood by M/s Merinoply and Chemicals Ltd.. It is found that

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apart from writing the word, "MERINO" in a style, the said marking also uses the word,

"TUFFPLY" which is the brand name of M/s Merinoply and Chemicals Ltd. Below the

same, pictures of Boiling Water and Termite working on wood and sun, have been

placed to indicate that the ply in question is boiling water-proof, termite-proof and

weather-proof and that such markings are not found on the products manufactured by

the respondents firms. Submitting further, learned counsel appearing for respondent

No.1 contended that the brand name as defined in Explanation VIII of the Notification

will not create an impression in the mind of the purchaser that the product is that of M/s

Merinoply and Chemicals Ltd. and that the use of markings as indicated above by the

respondents cannot be said to indicate any connection in the course of trade between

such specified goods and M/s Merinoply and Chemicals Ltd.

Learned counsel appearing for respondent No.1 further submitted that the

"Pelican" brand and "Pelican" logo had no visual or phonetic similarity with "MERINO"

logo in style and the said mark also uses the word "TUFFPLY" which is the brand name

of M/s Merinoply and Chemicals Ltd. The same contention was made in the counter

affidavit filed by M/s plyking, respondent No.2 herein.

Learned counsel appearing for respondent No.1, in support of his contentions,

placed reliance on the judgments in Commissioner of Central Excise, Chandigarh-

II vs. Bhalla Enterprises (Supra) and in Astra Pharmaceuticals (P) Ltd. vs.

Collector of Central Excise, Chandigarh, 1995(75) E.L.T. 214(S.C.).

We have carefully considered the rival submissions made by counsel appearing

on either side.

The impugned goods admittedly contained a registered logo "MERINO"

belonging to and owned by M/s Merinoply and Chemicals Ltd. Thus it was a clear case

where the impugned goods were admittedly affixed with registered logo/trade mark of

other person not eligible to S.S.I. exemption.

We have gone through the common order passed by the Tribunal. In our view,

the Tribunal has erred in not appreciating that to attract provision of clause 7 of

Notification No. 175/86-CE, it is sufficient that product contained a trade mark/logo of

another ineligible person which was fully satisfied in the instant case and whether the

product also contained the brand name/trade name/logo of the manufacturer would not

and cannot alter such position. Likewise, the interpretation of Explanation VIII as

advanced by the Tribunal does not appear to be correct in law and in fact. It was

imperative that by using the registered logo "MERINO" belonging to M/s Merinoply and

Chemicals Ltd. on their own product M/s Emkay Investment Ltd. fulfilled the purpose of

indicating a relation between the said products and the logo owner so as to influence

the trade and therefore, the provision of Explanation VIII were fully satisfied so far as

the case on hand was concerned. The finding of the Tribunal to the contrary, in our

opinion, is wrong and liable to be set aside.

The first respondent M/s Emkay Investment Pvt. Ltd., a manufacturer of plywood

in the brand name of "MERINO" classifiable under sub-Heading 4408.90 of the

Schedule to the Central Excise Tariff Act, 1985 (5 of 1985) have contravened the

provisions of Rules 9(1), 173B, 173C read with Section 4 of the Central Excise and Salt

Act, 1944 and Rules 173F, 173G(2) read with Rules 52A and 226 of the Central Excise

Rules, 1944, by way of suppressing the material fact of use of "MERINO" brand/logo on

their said goods which is actually owned by M/s Merinoply and Chemicals Ltd., a large

scale manufacturer of plywood, having annual clearance value of more than Rs.2

crores and thereby becoming ineligible for the benefit of exemption granted under

Government of India, Notification No. 175/86-CE dated 1.8.1986, as could be seen from

the notice of show cause issued to the respondents on 4.9.1991. We, therefore, hold

that M/s Merinoply and Chemicals Ltd., owns the said "MERINO" brand/logo and,

therefore, the plywood containing the imprint of such registered "MERINO" brand/logo

were not eligible for grant of benefit as per terms and conditions of the said Notification

No. 175/86-CE dated 1.3.1986 during the material period. The said Company never

disputed the fact that "MERINO" brand/logo belonged to the said M/s Merinoply and

Chemicals Ltd., a large scale manufacturer of plywood who are not entitled to the grant

of exemption benefit as per the above Notification. In reply to the show cause notice

and at the time of personal hearing, the respondents never disputed the fact of using

the word "MERINO" on their said goods in addition to other particulars. They

contended that the same was used only to indicate that the quality was similar to a

particular type of plywood.

We also hold that the goods so available in the market with "MERINO"

brand/logo established a connection between the said goods and the brand name

holder in the course of raids without indicating the identity of that person i.e. the said

Assam Company which conforms to Explanation VIII of the said Notification.

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In our opinion, the judgment of the Tribunal is wrong and against the ratio laid

down in the cases referred to infra. In the case of Commissioner of Central Excise,

Trichy vs. Rukmani Pakkwell Traders (supra), the respondents purchased the

scented supari in bulk from M/s ARR Nutcon Products. The scented supari is marked

under the brand name of "ARR" with a photograph of Shri A.R. Ramaswamy, the

founder of ARR group of Companies. The respondents claimed benefit of Notification

No.1/93-C.E., dated 28.2.1993. The said Notification grants exemption, amongst

others, to scented supari. Clause 4 of the Notification provides that the exemption

contained in the Notification shall not apply to specified goods bearing a brand name or

trade name of another person. The respondents were issued show cause notice that

their goods are not exempted under the said Notification. The Assistant Collector

confirmed the demand on the ground that they were not eligible to get exemption under

the Notification. The appeal filed by the respondent was also dismissed by the

Commissioner(Appeals). However, the Tribunal allowed the appeal of the respondents.

The Commissioner of Central Excise preferred civil appeal to this Court which was

allowed by this Court. S.N. Variava,J. speaking for the Bench held as under:

"In our view, this Circular has no application to the facts of the

present case. What the Circular clarifies is that if there are more than

one registered owners in respect of the same trade mark then merely

because the other person has the same registered mark in some other

goods would not preclude the owner of the trade mark from getting the

benefits of the circular. In this case, admittedly, the respondents are

not owners of the trade mark "ARR". They do not claim to have any

rights in the photograph of the founder of the group. Therefore,

reliance by the Tribunal on this circular is entirely erroneous.

The Tribunal then proceeds on the basis that the exemption

can be denied only if trade mark or brand name is used in respect of

the same goods for which the trade mark is registered. In coming to

this conclusion, we are afraid that the Tribunal has done something

which is not permissible to be done in law. It is settled law that

Exemption Notifications have to be strictly construed. They must be

interpreted on their own wording. Wordings of some other Notification

are of no benefit in construing a particular Notification. Clause 4 of this

Notification and the explanation (set out hereinabove) make it clear

that the exemption will not apply if the specified goods (i.e. scented

supari) bears a brand or trade name of another person. Neither in

Clause 4 of the Notification nor in Explanation IX is it provided that the

specified goods must be the same or similar to the goods for which the

brand name or trade name is registered. The Tribunal has in adopting

the above reasoning effectively added to the Notification words to the

effect "brand name or trade name in respect of the same goods". This

is clearly impermissible. It is to be seen that there may be an

unregistered brand name or an unregistered trade name. These might

not be in respect of any particular goods. Even if an unregistered

brand name or trade name is used the exemption is lost. This makes

it very clear that the exemption would be lost so long as the brand

name or trade name is used irrespective of whether the use is on

same goods as those for which the mark is registered.

The Tribunal had also held that under the Notification the use

must be of "such brand name". The Tribunal has held that the words

"such brand name" shows that the very same brand name or trade

name must be used. The Tribunal has held that if there are any

differences then the exemption would not be lost. We are afraid that in

coming to this conclusion the Tribunal has ignored Explanation IX.

Explanation IX makes it clear that the brand name or trade name shall

mean a brand name or trade name (whether registered or not) that is

to say a name or a mark, code number, design number, drawing

number, symbol, monogram, label, signature or invented word or

writing. This makes it very clear that even a use of part of a brand

name or trade name, so long as it indicates a connection in the course

of trade would be sufficient to disentitle the person from getting

exemption under the Notification. In this case admittedly the brand

name or trade name is the words "ARR" with the photograph of the

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founder of the group. Merely because the registered trade mark is not

entirely reproduced does not take the respondents out of Clause 4 and

make them eligible to the benefit of the Notification."

In the case of Commissioner of Central Excise, Chandigarh-I vs. Mahaan

Dairies (supra), the appeal was filed before this Court by the Commissioner of Central

Excise, Chandigarh. The question in this case before the Tribunal was whether the

respondents are entitled to exemption of Notification No.8/98.C.E. dated 2.6.1998 under

which certain goods were exempted from payment of excise duty. However, the

exemption was not available if the goods bore a brand name or trade name (whether

registered or not) of another person. S.N.Variava,J., speaking for the Bench, observed

as under:

"However, the respondents also sell pickle with the name

"Mahaan" written in exactly the same style as a registered trade mark

of other Company. The question would be whether by adding the

words "Taste maker" the respondents could get the benefit of the

Notification.

We have today delivered a judgment in Commissioner of

Central Excise, Trichy vs. Rukmani Pakkwell Traders 2004(165)

E.L.T. 481 (S.C.) (Civil Appeal Nos. 3227-3228/1998) wherein we

have held in respect of another Notification containing identical words

that it makes no difference whether the goods on which the trade

name or mark is used are the same in respect of which the trade mark

is registered. Even if the goods are different so long as the trade

name or brand name of some other Company is used the benefit of

the Notification would not be available. Further, in our view, once a

trade name or brand name is used then mere use of additional words

would not enable the party to claim the benefit of the Notification.

Such a view has been taken by the Tribunal in the case of

Festo Controls (P) Ltd. vs. CCE, Bangalore [1994(72) E.L.T. 919].

We approve that decision.

It is settled law that in order to claim benefit of a Notification a

party must strictly comply with the terms of the Notification. If on

wordings of the Notification the benefit is not available then by

stretching the words of the Notification or by adding words to the

Notification benefit cannot be conferred. The Tribunal has based its

decision on a decision delivered by it in Rukmani Pakkwell Traders

vs CCE, Trichy [1999(109)E.L.T. 204]. We have already overruled

the decision in that case. In this case also we hold the decision of the

Tribunal is unsustainable. It is accordingly set aside."

Commissioner of Central Excise, Chandigarh-II vs. Bhalla Enterprises

(supra): This case was relied on by both the parties. This is also a case of some brand

name used by different persons. The Division Bench, in this case, have also followed

the judgments of this Court in the case of Commissioner of Central Excise, Trichy

vs. Rukmani Pakkwell Traders (supra) and Commissioner of Central Excise,

Chandigarh-I vs. Mahaan Dairies and observed that clause 4 of the Notification read

with Explanation IX , in that case, clearly debars those persons from the benefit of the

exemption who use someone else's name in connection with their goods either with the

intention of indicating or in a manner so as to indicate a connection between the

assesses goods and such other person. Paragraph 6 of the judgment will be useful for

our purpose which is reproduced as under:

"The apprehension of the assesses that they may be denied

the exemption merely because some other traders even in a remote

area of the country had used the trade mark earlier is unfounded. The

notification clearly indicates that the assessee will be debarred only if it

uses on the goods in respect of which exemption is sought, the

same/similar brand name with the intention of indicating a connection

with the assesees' goods and such other person or uses the name in

such a manner that it would indicate such connection. Therefore, if the

assessee is able to satisfy the assessing authorities that there was no

such intention or that the user of the brand name was entirely

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fortuitous and could not on a fair appraisal of the marks indicate any

such connection, it would be entitled to the benefit of exemption. An

assessee would also be entitled to the benefit of the exemption if the

brand name belongs to the assessee himself although someone else

may be equally entitled to such name."

Astra Pharmaceuticals (P) Ltd. vs. Collector of Central Excise, Chandigarh

(supra) : This judgment will not be of any assistance to the case on hand. It is

distinguishable on facts and on law. Since it does not apply to the case on hand, we

are not inclined to consider the same.

Learned Solicitor General argued that exception or exempting provision in taxing

statute should be construed strictly. For the said proposition, we can safely and

beneficially rely on the recent judgment pronounced on dated 17.11.2004 in

C.A.No.7994 of 2003(State of Jharkhand & Ors. vs Ambay Cements & anr.) by a

Bench of S.N.Variava, Dr. AR. Lakshmanan & S.H. Kapadia,JJ. It is useful to

reproduce paragraphs 25,26 & 27 of the judgment which read as under:

"In our view, an exception or an exempting provision in a taxing

statute should be construed strictly and it is not open to the Court to

ignore the conditions prescribed in the Industrial Policy and the

exemption Notifications.

In our view, the failure to comply with the requirements renders

the writ petition filed by the respondent liable to be dismissed. While

mandatory rule must be strictly observed, substantial compliance

might suffice in the case of a directory rule.

Whenever the statute prescribes that a particular act is to be

done in a particular manner and also lays down that failure to comply

with the said requirement leads to severe consequences, such

requirement would be mandatory. It is the cardinal rule of the

interpretation that where a statute provides that a particular thing

should be done, it should be done in the manner prescribed and not in

any other way. It is also settled rule of interpretation that where a

statute is penal in character, it must be strictly construed and followed.

Since the requirement, in the instant case, of obtaining prior

permission is mandatory, therefore, non-compliance of the same must

result in canceling the concession made in favour of the grantee-the

respondent herein. "

B.H.E.L. Ancillary Association vs. Collector of Central Excise (supra) : This

judgment was relied on by the learned Solicitor General in support of his contention.

The very same Notification No. 175/86-CE dated 1.3.1986 was the subject matter of the

said case which accords exemption to goods produced by small scale industrial

undertakings. The units of which the petitioners are the Associations, and which Units

are ancillary to Bharat Heavy Electricals Limited have fabricated certain components

required by BHEL. In respect of such components manufactured by the Units,

exemption was asked for as per the Notification. The exemption was not accorded to

the Units, on the ground that clause 7 read with Explanation VIII of the Notification is

attracted to the components manufactured by the Units. This contention was

accepted by the learned single Judge, who opined that certain stencil marks on the

components manufactured by the Units made by them would make the components,

though manufactured by the Units, as having been affixed with a brand name or a trade

name of BHEL which is not eligible for the grant of exemption under the Notification

within the meaning of clause 7 read with Explanation VIII of the Notification. This

construction of the learned single Judge was the subject matter of the challenge in the

writ appeals. The Bench observed as follows:

"\005\005\005The name or mark is equated to symbol, monogram,

label, signature or invented word or writing. But a mere finding of

symbol, monogram etc., on the goods would not bring the matter

within Explanation VIII, so as to fall within the exception to the

exemption set out in clause 7 to the Notification. Something more is

required by Explanation VIII and that is, the above markings must have

been used in relation to the specified goods for the purpose of

indicating or so as to indicate a connection in the course of trade

between such specified goods and BHEL using such name or mark

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with or without any indication of the identity of BHEL. Here, there is no

symbol, no monogram, no label and no signature of any nature much

less of BHEL found on the components manufactured by the Units.

The markings or inscriptions found on the components may amount to

invented words or writings. But the markings or inscriptions have not

been and are not being used by BHEL at all. They have been used

and are being used by the Units and Units alone, may be pursuant to

the contractual requirements between BHEL and the Units even as per

the averments in the counter affidavit of respondents 1 to 3. The

markings or inscriptions, individually or cumulatively do not go to

constitute a name or a mark such as symbol, monogram etc. of BHEL,

used by BHEL in relation to the components manufactured by the

Units. They may have a purpose to serve. But certainly they do not

by themselves constitute a name or mark used by BHEL. But the

stress, which we could spell out cumulatively from the language used

in Explanation VIII, is that the name or mark such as symbol,

monogram etc. should have been used by BHEL for the purpose of

indicating or so as to indicate a connection in the course of trade

between the components and BHEL using such name or mark. It is

true that by a bare looking at the inscriptions or markings or by a bare

visual inspection, there need not be an indication of the identity of

BHEL. But fundamentally these markings or inscriptions do not go to

constitute a name or mark of BHEL; ,much less used by BHEL in

relation to such components. There is a faltering with regard to the

satisfaction of the primary ingredient required by Explanation VIII."

Accordingly the High Court allowed the appeals and set aside the order of the

learned single Judge.

For the foregoing reasons, we allow the appeals and set aside the order dated

9.6.1998 passed by the CEGAT impugned in these appeals and answer the issues

involved in favour of the appellant and hold that the respondents who are the

manufacturers of plywood under their own brand name M/s Pelican are disentitled to

the benefit of small scale exemption Notification No.175/86-CE dated 1.3.1986 by using

logo indicating "MERINO" on their product along with their brand name.

However, in the facts and circumstances of the case, there shall be no order as

to costs.