F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd.

Judgment

CIVIL APPELLATE JURISDICTION : Civil Appeal No. 1330 of 1966. Appeal from the judgment and order dated August 4, 7, 1964 of the Bombay High Court in Appeal No, 65 of 1962. K. S. Shavaksha, R. A. Shah, J, B. Dadachanji and Bhuvanesh Kumari, for the appellant. M. C. Chagla, l. M. Chagla, Anoop Singh, M. N. Shroff, for /. N. Shroff, for the respondent. The Judgment of the Court was delivered by Ramaswami, J. This appeal is brought by certificate from the judgment of the Bombay High Court dated August 17, 1964 in application no. 65 of 1962 upholding in part the judgment of Mr. Justice Tarkunde dated December 7, 1962 in Miscell~eous Petition No. 358 of 1961. The appellant is a limited liability company incorporated under the laws of Switzerland and carries on business in the manufacture and sale of pharmaceutical and chemical products.

The respqndent is a company incorporated under the Companies Act in India and also carries on business in the manufacture and sale of pharmaceutical products. On December 2, 1946 the appellant applied for registration of its trade mark "PROTOVIT". The application was granted and the appellants mark was registered i/11 Class V in respect of 8 ROC~ & co. V. G. MANNERS & co. (Ramaswami, J.) "Pharmaceutical preparations for human use and for veterinary use, infants' and invalid5' foods". The appellant thereafter used that1nark on multi-vitamin preparations in liquid ·aind tablet forms and its goods are being sold under that mark at least since the year 19:il. On January 28, 1.957 the respondent applied for registration of its mark "DROPOVIT" in respect of "medicinal and pharmaceutical preparations and substances". The application was registered but the advertisement of the respoadent's application escaped the notice of the appellant who did :not hence oppose the registration.

By a letter dated March 4, 1958 Messrs Voltas Ltd., the appellant's agents, drew the attention of the appellant to the respondent's mark "DROPOVIT". There was negotiation betweein the parties but on March 19, 1958 the respondents wrote to the appellant re.fusing to alter its trade mark. On January 21, 1959 the appellant ,applied for rectification of the Register by removal therefrom of the respondent's trade mark. The ground urged in support of the application was that the respondent's mark so nearly resembled the appellant's mark as to be likely to deceive or cause confusion. On March 9, 1960 the appellant applied for amendment of the application and an additional ground was taken that "DROPOVIT" was not an invented word. The application for amendment was allowed by the Registrar. The amended application was opposed by the respondent.

By his judgment dated August 5, 1961 the Joint R.~gistrar rejected the application for rectification holding that "DROPOVIT" was not deceptively similar to "PROTOVIT" and that the word "DROPOVIT" considered as a whole was not descriptive. The appellant took the matter in appeal to the Bombay High Court. On December 7, 1962 Mr. Justice Tarkunde dismissed the appeal. The appellant preferred an appeal under Letters Patent but the appeal was dismissed by a Division Bench consisting of Chief Justice Chainani and Mody, J. on August 17, 1964. During the hearing of tt,e appeal the respondent restricted the designation of goods to "medicinal and pharmaceutical prei)arafions and substances containing principally vitamins. The application for rectification was made on January 21, 1959 before the Trade and Merchandise Marks Act. 1958 (Act no. 43 of 1958) came into operation. But it is not disputed that under s. 136(3) of this Act the decision of this ease· is governed by the provisions of Act no.

43 of 1958 (hereinafter called the Act). Section 11 of the Act states : "A mark- ( a) the use of which would be likely to deceive or . cause confusion; or SUPREME COURT REPORT& [l 970J2 S.C.R. (b) the use of which would be contrary to any law for the time being in force;. or ( c) which comprises or confai.ns scandalous or obscene matter; or (d) which comprises or contams any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or ( e) which would otherwise be disentitled to protection in a court; shall not be registered as a trade mark.''" Section 12(1) provides "Save as provided in sub-section ( 3),. no trade mark shall be registered in respec~ of any goods or description of goods which is identical ,vith or deceptively similar to a trade mark which is already re.gistered in the name of a different proprietor in respect of ,he same goods or descriptive of goods." Section 5 6 (1 ) reads :

"On application made in the prescribed malliller to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit forcancelling or varying the registration of a trade mark on the ground of any contraveo:i.tion, or failure to observe a condition entered on the register in relation thereto." Section 2 (1 )( d) defines the phrase "deceptively similar" as follows : "A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;" The first questioo to be considered in this appeal is whether the word "DROPOVIT" is deceptively similar to· the word "PROTOVIT" and offends the provision of s. 12(1) of the Act. In other words the question is whether the respondent's mark so nearly resembles the registered mark as to be "likely to deceive or cause confusion." It is not necessary that it should be intended to deceive or intended to cause cOjllfusion.

It is its probable effect on"the ordinary kind of customers that one has to consider. I ROCHE & co. v. G. MANNERS & co. (Ramaswami, J.) In Parker-Knoll Ltd. v. Knoll International Ltd.(') Lord Denning explained the words "to deceive" and the phrase "to cause confusion" as follows : "Secondly, 'to deceive' is one thing. To 'cause confusion' is another. The difference is this : When you deceive a man, you tell him a lie. You make a f.alse representation to him ain.d thereby cause him to behev.e a thing to be trw~ which is false. You may not do 1t knowingly, or intentionally,. ]?~t still you do i~, and. so you deceive him. But you may cause confus10n without telling him a lie at all, and without making any false repres~tation to him.

You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fauii of yours. but because he has not the knowledge or ability to distinguish it from the other pieces of truth Known to )lim or because he may not even take the trouble to do so." The tests for comparisqn of the two word marks were formulated by Lord Parker in Pionotist Co., Ltd.'s application(') as follows : "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider 3]] the surrounding circumstances; and you must further C0)11sider what is likely to happen if each o! those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

If, considering all those circumstances, you come to the conclusion that there will be a confusionthat is to say, not necessarily that one man will be injured and the other will gaitn illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case." It is necessary to apply both the visual and t;honetic tests. In Aristoc Ltd. v. Rysta Ltd.(') the House of Lo;ds was considerincr the resemblance between the two words "Aristoc" and "Rysta"~ The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. (!) 1962 R.P.C. 265 at 274 (2) 23 R.P. C. 774 at 777 (3) 62 R. P. C. 65 at 72. Viscount Maugham cited the following passage of Lord Justice Luxmoore in the.

Court of Appeal, which ·passage, he said, he completely accepred as the correct exposition of the law : 'The answer to the question whether the sound of one word resembles too nearly the sound of another so as to briing the former within the limits of section 12 of the Trade Marks Act, 19-38, must nearly always depend on first impression, for obviou~ly a person who is familiar with both words will neitlier be deceived nor contused. It is the person who only knows the one· word and has perhaps an imperfect recollection of it who is lik"elv to be deceived or confused Little assist~,nce, therefore, is·tO be obtained from a meticulous comparison Of the two words. Jetter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of· careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants". It is also importanr that the marks must be compared as wholes. It is ,not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of t~.e word in the other case there is no sufficient similarity to cause _confusion. The trne test is whether the totality of the proposed trade mark is sll'eh that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thu< ~n Layroma case('). Lord Johnston said: " . . . . . . we are not bound to scan the words as we would in a question of comparatio /iterarum.

It is not a matter for microscopic inspection, but to be taken from · the general and even casual point of view of < customer walking into a shop." In order to decide whether t~e word "DROPOVIT" is deceptively similar to the word "PROTOVIT" each of the' two words must, therefore, be taktiri as a whole word. Each of the two words consists of ejght letters, the last three letters are common, and in the uncom1n.on part the first two are consonants. the next is the same vowel 'o', the next ls a consonant and the fifth is again a commo1n vowel 'o'. Th!! combined effect is to produce an alliteration. The affidavits of the appellant indicate that the last three letters "VIT" is a well known common abbreviation used in the pharmaceutical trade to denote Vitamin preparations. In (I )'Toka1on Lt1. v. Davidw1 & Co., 32 R. P. C. 133 at 136. ROCHE & co. v. G. MANNERS & co.

(Ramaswami, J.) his affidavit dated January 11, 1961 Frank Murdoch, has reforr;:d to the existence on the Register of about 57 trade marks whie.h have the common suffix "VIT" indicating that the goods are vitamin preparations. It is apparent that the terminal syllable '"VIT" in the two marks is both descriptive and common to the trade. If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistak~ for or confused with the other. The letters 'D' and 'P' in "DROPOVIT" and the corresponding letters '1" and 'T' in "PROTOVIT" cannot possibly be slurred over in pronunciation l!nd the words are so dis;imilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view. In the High Court, counsel for the respondent made a statemerni that the respondent was willing that the Court should direct in exercise of ils powers under s.

56(2) that the Registrar should limit the respondent's trade mark "DROPOVIT" to medicinal and J!lharmaceutical preparations and substances containing principally vitamins and that the appeal should be decided 0;n this ba~is. The question of deceptive similarity must therefore be decided on the tiasis of the class of goods to which the two trade marks apply subject to the limitation agreed to by the respondent. From the nature 0f the goods it is likelv that most of the customers would obtain a prescription from " doctor and show it to the chemist bet'ore the purchase. In such a case, except, in the event of the handwriting o.; the doctor being very bad or. illegible the chance of confusion is remote. As we have alrclldy observed the evidence shows that there are as many a' 57 trade marks ih the Register of Trade Marks with the suffix "VIT".

Therefore, even am average customer would know that in respect of Vitamin pn:parations the word "VIT" occurs in lame n\11llber of trade marks and because of this he would naturally-be on his guard and tak@ special coce against making a mistake. In this connectio,n th(\ provisions of the Drug Rules, 1945 a~e also televant. Under r.

61(2) vitamin preparations would be covered by item-5..in Schedule C-(1) to the Rules and a licence would be required to stock such vitamin preparations and to sell th1:u! retail. ','he question of c0infusion must hence be determined <in the basis that the goods with one of the twc rival trade marks. would be sold Onlv by such a licensed dealer and Would not be available in anv other shop, The fact that the vendor would be a licensed dealer also reduces the possibility o.f confusion to a considerable extent Having taken into account all circumstances of the present case we are of the opinion th~t the High Court and the Joint Regi~trar of Trade Marks were right in holding th&, there was no real tangible danger of crinfusion if respondent's trade 11111rk was allowed to continue to remain on the Register and the application for rectification made by the appellant should be dismissed.

The question was also argued in the appeal whether the word "DilOPOVIT" was not an inve1nted word and whether it was a descriptive word. Section 9 (1) of the Act states- "A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely- ( c) one or more inve1nted words; ( d) one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name or a surname or a personal 1name or any common abbreviation thereof or the name of a sect, caste or tribe in India;" It is contended on behalf of the appellant that "DROPOVIT" meant only "DROP OF VITAMI':" with the word 'of' being mis-spelled as 'o' 'VIT' being used to denote "Vitamins", and the three separate words are joined together to make "DROPOVIT" as one word.

It was said that the word "DROPOVIT" was simply a combhation of three common words in English language and cannot, therefore, be said to be an invented word. In Diabolo case(') Parker J., has explained the meaning of "invented word" as follows : "To be an invented word within the meaining e>f the Act a word must not only be newly coined, in the sense of not being already current in the English language, but must besuch as inot to convey any meaning, or, at any rate, any obvious meaning to ordinary Englishmen. It must be a word having no meaning or no obvious meaning until one has bee)ll assigned to it." In the case of De Cordova and others v. Vick Chemical Co.(') the Privy Council referred to that interpretation of Parker J., as "the best standing interpretation". The question arising in this case is whether the word "DROPOVIT" would strike an ordinary person knov·ing English as meaning "DROP OF VITAMIN".

In this connection the High Court has pointed out that the original application for rectification did not contain the ground that the word of "DROPOVIT" was descriptive. It was, therefore, legitimate t<> draw the inference that the word (I) 25 R. P. C. 565. (1) '8 R. P. <'. 10]. 8 ROCHE & co. V. G, MANNERS & co. (Ramaswami, J.) "DROPOVIT' did not •trike even Messrs Depenning and De- Pqnning the legal advisers of the appellant as being descriptive. It was also pointed out that in his judgment Mr. Justice Tarkt.ade has remarked that when the case was opened before him he did not understand that the word "DROPOVIT" meant "DROP OF VITAMIN" till the explanation of that word was given to him. We see no reason, therefore, to .differ from the reason\n_g of the High Court on this aspect of the case. If the word "DROPOVIT" is not a tlescriptive word it mnst be held to be an invented word.

It is true that the word "DROPOVIT" is coined out of words commonly used by and known to ordinary persons know4ng English. But the resulitng combination produce, a new word, a newly coined word which does not remind ain ordinary person knowing English of the origiaal words out of which it is coined unless he is so told or unless at least he devotes some thought to it. It follows that the word "DROPOVIT" being an invented word was entitled to be registered as a trade mark aind is not liable to be removed from the Register on which it already exists. For the reasons expressed we hold that this appeal fails and must be dismissed with costs. G.C. Appeal dismissed .