TMI Blog1959 (10) TMI 30X X X X Extracts X X X X X X X X Extracts X X X X ..... made by the respondent and it was opposed by the appellant. 2. The respondent is a manufacturer of biscuits. On November 5, 1949, it made the application for registration of the mark 'Gluvita' in respect of the goods specified in class 30, which mark, it appeared later, it had not used prior to that date. The Registrar ordered the application to be advertised before acceptance on the respondent's agreeing to limit the registration to biscuits only which were one of the classes of goods specified in class 30. 3. The appellant is a corporation organised under the laws of the State of New Jersey in the United States. On August 31, 1942, it had registered the mark 'Glucovita' under the Act in class 30 in respect of Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient in food; glucose for food. On the same date the appellant had also registered the same trade mark in class 5 in respect of Infants' and invalids' foods. 4. The appellant opposed the respondent's application contending that it should be refused under ss. 8(a) and 10(1) of the Act to which opposition the respondent duly filed a counter sta ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... among the public but that the evidence produced showed that it had acquired a reputation among the trades people only who were discerning and were not likely to be deceived or confused. According to them, the public not being aware of the reputation of the appellant's trademark were not likely to be deceived or confused by the use by the respondent of its proposed trademark. They also held that the evidence established that there were a series of marks in which the prefix or suffix 'Gluco' or 'Vita' occurred and that it could not therefore be said that the common features 'Gluco' and 'Vita' were only associated with the manufacture of the appellant's goods. On both these grounds they held that the proposed mark of the respondent was not likely to confuse or deceive any one. In the result, they set aside the order of Desai, J., and restored that of the Deputy Registrar. The appellant has now appealed to this Court from the judgment of the appellate Judges of the High Court. 8. As we have earlier stated, the appellant had opposed the registration of the respondent's mark under s. 8(a) and also under s. 10(1). In order that s. 10(1) migh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... But the most conclusive evidence of the sale of the appellant's goods under the mark 'Glucovita' to the general public comes from the affidavits filed by the respondents itself. From the affidavit of K. M. Jamal, a partner in a firm of Pawar and Co., filed by the respondent, it appears that a number of customers come to buy the products 'Gluvita' and the products 'Glucovita'. Similar statements appear in eight other such affidavits. The evidence provided by these affidavits make it perfectly clear that the appellant's mark had acquired a reputation among the general buying public. We think it right in this connection also to refer to the respondent's grounds of appeal against the judgment of Desai, J. In these the respondent does not dispute, and in fact it assumes, that the appellant's mark had acquired a reputation among the public. We are, therefore, fully satisfied that the appellant has established that its mark has acquired a reputation among the buying public. 11. In connection with the question of reputation, the learned appellate Judges seem to have fallen into another curious error. They said A commodity may acquire reputatio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (England) Limited [64 R.P.C. 76]. It is clear however from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that those marks had acquired a reputation by user in the market. We will read a portion of the judgment at pp. 82 83 in Beck, Kollar Co's case [64 R.P.C. 76] from which what we have stated earlier, appears : I am disposed to agree with Mr. Burrell's submission that the series objections is primarily founded upon user, because the inference which the Registrar is asked to draw is that traders and the public have gained such a knowledge of the common element or characteristic of the series that when they meet another mark having the same characteristic they will immediately associate the later mark with the series of the marks with which they are already familiar. But I do not think that this statement necessarily implies that the whole issue must be determined solely under the provisions of section 11, as I will now endeavour to explain. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rrounding circumstances, but that before he can draw the suggested inference based upon the user of other marks either in the applicant's or the opponent's favour, any such user must be established by evidence (see, e.g. Harrods Ld.'Application, 52 R.P.C., p. 70, 1. 39-p. 71, 1. 15, where the Registrar refused to draw the necessary inference in favour of the applicants in the proceedings). 14. We have no reason to think that Kerly in stating the law on the subject intended to depart from the principle stated in the passage that we have just now read, from Beck, Kollar Co's case. 15. We may also refer to In re : Harrods' application [52 R.P.C. 65], mentioned in the quotation from Beck, Kollar Co's case [64 R.P.C. 76], set out in the preceding paragraph. It was there said at p. 70, 16. Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause purchasers to pay more attenti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hey did not express any view on this aspect of the question at all. We are however inclined to think that their answer to the question would have been in the affirmative. However that may be, the Deputy Registrar felt that the words were not so similar as to be likely to give rise to confusion or to cause deception. He felt that the syllable 'co' in the appellant's mark was an emphatic characteristic and was not likely to be slurred over. He apparently felt that this syllable would prevent any confusion arising between the two marks or any person being deceived by the use of them both. He thought that the test down in what is called the Ovax case (In re : an application by Smith Hayden and Co. Ltd. [63 R.P.C. 97], should be applied and that the emphatic characteristic of the second syllable in the mark 'Glucovita' should decide that there was no likelihood of confusion arising. Desai, J., thought that the Deputy Registrar was wrong. 19. We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... c case (In re : an application by Edward Hack [58 R.P.C. 91]), was taken into consideration in arriving at the conclusion that there was likelihood of confusion or deception. The goods in this case were chocolates and laxatives and it was proved that laxatives were often made with chocolate coatings. We may also refer to the Panda case (In re : an application by Ladislas Jellinek [63 R.P.C. 59]). The goods there concerned were shoes and shoe polishes. It was observed that shoe polishes being used for shoes, there was trade connection between them and that this might lead to confusion or deception though the goods were different. The application for registration was however refused under that section of the English Act which corresponds to s. 8 of our Act on the ground that the opponents, the manufacturers of shoes, had not established a reputation for their trademark among the public. 22. It is true that in both the above-mentioned cases the two competing trade marks were absolutely identical which is not the case here. But that in our opinion makes no difference. The absolute indentity of the two competing marks or their close resemblance is only one of the tests for determi ..... X X X X Extracts X X X X X X X X Extracts X X X X
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