TMI Blog1964 (10) TMI 83X X X X Extracts X X X X X X X X Extracts X X X X ..... . As there are concurrent findings of fact on this matter, we do not propose to enter into a discussion of this question de novo, since we are satisfied that the conclusion reached is not unreasonable. Appeal dismissed - C.A. 522 OF 1962 - - - Dated:- 20-10-1964 - N. RAJAGOPALA AYYANGAR, P.B. GAJENDRAGADKAR AND J. C. SHAH, JJ. For the Appellant C.B. Agarwala, N. K. Anand and J. B. Dadachanji For the Respondent G.S. Pathak and Sardar Bahadur JUDGMENT These two appeals, by special leave, are con- cerned with the validity of the respondent-firm's claim as the registered proprietor of a Trade Mark `Navaratna Pharmaceutical Laboratories' used by it on its medicinal preparations. The two appeals arise out of different proceedings but before narrating their history it would be convenient to briefly set out the facts upon which the claim of the respondent to the exclusive use of this Trade Mark is based. The respondent, as stated already, is a firm and it carries on business at Ernakulam in the same name and style as the Trade Mark now in controversy--"Navaratna Pharmaceutical Laboratories". As its name indicates, the firm manufactures medicinal products. The busi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 6, The applied for the registration of the Words "NaVaratna Kalpa" as a Trade Mark for his medicinal preparations. This application was advertised in April, 1950, and the, respondent-firm opposed the application for registration on the ground that the word -Navaratna" was descriptive and, having no distinctiveness, could not be registered. This objection prevailed and the registration was refused. This led to the proceedings which have culminated in these appeals. In the first instance, the appellant moved the Registrar Of Trade Marks for removing from the register the trade mark "Navaratna" and the word "Navarama" in the Other mark of the respondent. By this date, however, the respondent had filed wit No. 233 of 1951 (from which C.A. No. 522 of 1962 arises) before the District Judge, Anjikaimal, for a permanent injunction restraining the appellant from advertising, selling or offering for sale any preparations under a trade mark combining the word 'Navaratne or any similar word etc. By reason of the pendency of this proceeding in which the validity of the registration of the respondent's mark was directly involved the Registrar refused his application, and directed the appellant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... combination of the word with the two other words "Pharmaceutical" and Laboratories" which were ordinary English words descriptive of the place where medicines were prepared could not render the trade mark a registerable one. For them two reasons the defence was that no claim could be made to relief under s. 21 of the Trade Marks Act, 1940. (2)Next it was submitted that even on the basis that the plaintiff was entitled to the use of the word "Navaratna' either alone or in the combination "Navaratna Pharmaceutical Laboratories", still the use, of the trade mark by the defendant of the words "Navaratna Kalpa" and "Navaratna Kalpa Pharmacy" were not either identical with nor deceptively similar to the plaintiffs marks and therefore he was not guilty of any infringement. (3)As regards the claim for relief on the basis of passing off, the defendant laid stress upon the packing, get-up and the manner in which the trade origin of the goods was clearly brought out in the packages in which his preparations were marketed and it was submitted that they clearly negatived any possibility of passing off. Appropriate issues were raised based on the pleadings and the contentions just now ind ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y the appellant after obtaining special leave from this Court in these two matters respectively. The first submission of Mr. Agarwala, learned Counsel for the appellant was that the judgment of the High Court holding the respondent's claim to the trade mark "Navaratna Pharmaceutical Laboratories" as a validly registered mark was really inconsistent with their finding that "Navaratna" which was the crucial and important word in that trade mark was a descriptive word in regard to which the respondent could obtain no exclusive right by any amount of user. His further submission was that if he was right in this, the addition of the words "Pharmaceutical" and "Laboratories" which were common English words of ordinary use to designate the place where pharmaceutical products are manufactured, were, on the terms of s. 6 of the Trade Marks Act and even otherwise, incapable of acquiring distinctness by mere user. He, therefore submitted that the plaintiff had no exclusive right to the use of the mark as a registered trade mark and that consequently his claim for the relief of perpetual injunction Under s. 21 of the Trade Marks Act was not sustainable. For this purpose learned Counsel relie ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f acquired distinctiveness as entitling the trade mark to registration." The learned Counsel particularly stressed clause (d) of sub- s. (1) which excluded words "having direct reference to the character or quality of the goods" from being treated as distinctive, and thus qualifying for registrability. 'Me word 'Navaratna' having been held to be not distinctive and indeed incapable of becoming distinctive by reason of its being merely the Sanskrit word for describing Ayurvedic preparations of a particular composition, he submitted that the words "Pharmaceutical' and 'Laboratories' could neither by themselves nor in combination with it confer upon that word the quality of distinctiveness having regard to their ordinary descriptive signification. If the matter had to be decided in terms of s. 6(1) alone without reference to the terms of the proviso to sub-s. (3) to which we shall advert presently we see great force in the submission of the learned Counsel. As Pry L. J. said in : Dunn(1) with reference to the cor- responding law in U.K. which has been reproduced by s. 6 of the Indian Act: "It is said that the words 'Fruit-Salt' have never been used in collocation except by Mr. E ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t distinctiveness. In spite of this fact the Registrar refused registration and has been upheld in his refusal by Lloyd-Jacob, J. and the unanimous opinion of the Court of Appeal........ Here I must express my emphatic dissent from the proposition which was strenuously urged by Counsel for the Appel- lants that distinctiveness in fact is conclusive-at any rate, if there is what he called 100 per cent distinctiveness. In my opinion the decisions of this House in the W. G. case and the Glastonbury case are fatal to this proposition and I am content to accept as accurate the clear exposition of those cases given by the learned Master of the Rolls in the present case. He took the view which I share that the Court of Appeal had in the Liverpool Cable case rightly interpreted the opinion of Lord Parker in the W. G. case and that this House, in its turn, in the Glastonbury case endorsed that interpretation. Accepting that view of the law, which indeed, if the matter were res integral I should not hesitate to commend to your Lordships, I do not see how the Registrar could have come to any other conclusion. Unless, having found distinctiveness in fact, he needed to pay no regard to the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the mark to indicate by its use the origin of the goods on which it was used. There was also indubitable evidence regarding the recognition of that mark as indicating origin on the part of that section of the public who buy these goods in the course of trade or for consumption. Thus the finding was that by reputation the mark had come to denote the goods of the Besides. the words were not a merely laudatory expression in relation to the goods, but descriptive though as such they would prima facie not be distinctive. Length of user would, of course, be a material factor for the mark to become distinctive and the learned District Judge found that by such a long user the mark had become exclusively associated with the goods of the respondent in the market. Though the learned Judges of the High Court have not dis- cussed this question in their judgment, they have affirmed in general terms the conclusions recorded by the District Judge on this point. There being concurrent findings on the question as to whether the respondent's mark has acquired distinctiveness as a matter of fact, and there being no error of law in the criteria applied for reaching them, it would not be open to th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eswaraies treatise which learned Counsel adopted' as part of his argument. no primary requisite for attracting the proviso is that the trade mark must have been continuously used in relation to the same goods as those in relation to which registration is applied for from a period prior to February 25, 1937. It is true that in the present case the relevant mark as used before February 25, 1937 was "Navaratna Pharmacy" and' the mark now on the register the validity of whose registration under the Trade Marks Act is in question is "Navaratna Pharmaceutical Laboratories". But it would be noticed that by the words within the brackets in the proviso marks "either in their original form or with additions or alterations not substantially affecting its identity" qualify for the special privileges accorded' to old marks. It was not contended before the Courts below or before us that the mark now in question did not satisfy this test when compared with that which the respondent was using prior to February 25, 1937. This being conceded, the only question for consideration is whether the last part of the proviso that the Registrar may accept evidence of acquired distinctive- ness as entitling a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n the proviso. It was said that this construction which would render the proviso otiose and a futility was necessitated by the opening words of sub-s. (2) where the definition of the expression "distinctive" was said to be "for the purposes of this section and that the proviso to the sub-section being part of the section, the words there had to be understood in the sense defined. We feel unable toaccept this construction, nor do we read the opening words ofsub-s. (2) as necessarily leading to this result. Briefly stated,"distinctive" is defined in sub-s. (2) as "adapted to distinguish" and the latter phrase explained in language which might exclude what is negatived by S. 6 (1 ) (d). But that, however, does not solve the problem created by the words of the proviso "Shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid". The use of the words "as aforesaid" takes one back first to sub- s. (3) and then on to sub-s. (2). and necessarily also to the provision in s. 6(1) (d) where marks which are incapable of acquiring distinctiveness are dealt with. Hence even on the terms of the proviso, however construed, it is not po ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... egistration under the proviso to S. 6(3) by not having acquired that degree of factual distinctiveness which the Registrar considers is sufficient to enable it to qualify for registration. It is therefore possible to conceive of cases where even if the proviso to S. 6(3) were construed in the manner in which we 'have indicated, there would still be scope for the rejection by the Registrar of a trade mark in use prior to the specified date. That in our opinion, is the true ratio of the decision of McNair, J. in India Electric Works Ltd.(1) on which Mr. Agarwala relied in this connection. The Court was there concerned with an appeal from an order of the Registrar refusing registration in respect of an old mark. The mark in question was the word 'India' as applied to electric 'fans. The learned Judge dismissed the appeal on the ground that the word 'India' was a geographical word and therefore -would not qualify for registration being prohibited by S. 6 (1) (d). The learned Judge also considered whether the mark could 'qualify for registration under the proviso. The conclusion -reached on this part of the case was that the applicant had not established factual acquired distinctivene ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to the word 'Navaratna' in the trade mark 'Navaratna Pharmaceutical Laboratories' or that the disclaimer should have been ordered as a condition of the trade mark remaining on the register under s. 13 of the Act., (2) The finding by the Courts below that the marks were deceptively similar was directly contrary to and inconsistent with their finding that the packing, label, get-up etc., in which the appellant's goods were marketed was not likely to cause any confusion in the market or deceive any purchasers, wary or otherwise on the basis of which the claim for passing off was rejected. As regards the first contention regarding disclaimer and the reference to s. 13, the matter stands thus. Under the terms of s. 13 of the Act, an order directing disclaimer could have been passed only by the High Court when- dealing with the appellant's application under s. 46 (2) of the Act. The application that he filed contained no prayer to direct a disclaimer, and no submission appears to have been made to the High Court when dealing with the petition or even with the appeal that the respondent should be directed to disclaim. In these circumstances, we do not consider it proper to permit the a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ssential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the .conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficien ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... has been in- fringed by the appellant is the mark 'Navaratna Pharmaceutical Laboratories', and the mark of the appellant which the respondent claimed was a colourable imitation of that mark is 'Navaratna Pharmacy. Mr. Agarwala here again stressed the fact that the 'Navaratna' which constituted an essential part or feature of the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant's mark were disregarded, there would not be enough material left for holding that the appellant had used a trade mark which was deceptively similar to that of the respondent. But this proceeds, in our opinion, on ignoring that the appellant is not, as we have explained earlier, entitled to insist on a disclaimer, in regard to that word by the respondent. In these circumstances, the trade mark to be compared with that used by the appellant is the entire registered mark including the word 'Navaratna'. Even otherwise, as stated in a slightly different context: "Where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts which are common". It ..... X X X X Extracts X X X X X X X X Extracts X X X X
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