MANU/SC/0115/1959

Equivalent Citation: AIR1960SC142, 1960(62)BOMLR162, [1960]1SCR968

Equivalent Citation : AIR 1960 SC 142

IN THE SUPREME COURT OF INDIA

Civil Appeal No. 319 of 1955

Decided On: 08.10.1959

Appellants:Corn Products Refining Co.

Vs.
Respondent:Shangrila Food Products Ltd.

Hon'ble Judges/Coram:
A.K. Sarkar, J.L. Kapur and S.K. Das, JJ.

Case Note:

The case debated on whether the registration of trade mark could be refused
to the respondent company on the ground that it was similar to the
appellant's trade mark which was already registered under the Trade Marks
Act, 1940 - It was held that the registration of the brand name sought by the
respondent was very similar to the registered brand of the appellants and
could deceive or confuse the public - Thus registration of the same could be
refused under Section 8(a) of the Act

JUDGMENT

A.K. Sarkar, J.

1. This appeal arises out of an application made under the Trade Marks Act, 1940,
hereinafter called the Act, for registration of a trade mark. The application was 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 Sections 8(a) and 10(1) of the Act to which opposition the respondent

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duly filed a counter statement. Both sides filed affidavits in support of their respective
cases.

5. The Deputy Registrar held that Section 12 as for biscuits included in class 30 were
not goods of the same description as glucose powder mixed with vitamins which was in
the same class. He further held that the words 'Glucovita' and 'Gluvita' were not
visually or phonetically similar and that there was no reasonable likelihood of any
deception being caused by or any confusion arising from, the use of the respondent's
proposed mark. In regard to s. 8(a), he held applying the cases of In re : an
application by Smith Hayden & Coy. Ld. (1945) 63 R.P.C. 97, that the syllable 'co'
which was absent in the respondent's proposed mark sufficiently distinguished the two
marks and made it impossible for any one to be deceived or confused. One of the
findings made by the Deputy Registrar was that the appellant had acquired a
reputation and goodwill for its trade mark 'Glucovita' in respect of glucose powder
mixed with vitamins.

6. The appellant then preferred an appeal to the High Court at Bombay from the order
of the Deputy Registrar. That appeal was heard by Desai, J., exercising the original
jurisdiction of that Court. It was not seriously pressed before him on behalf of the
appellant that the goods were of the same description and he himself also came to the
conclusion that they were not so. He, therefore, held that the registration could not be
refused under s. 10(1) of the Act. Desai, J., agreed with the Deputy Registrar's finding
that the appellant had acquired a reputation among the public for the mark 'Glucovita'
in respect of glucose powder mixed with vitamins. He however disagreed with the view
of the Deputy Registrar that the respondent's mark was not likely to cause deception
or confusion. He held that the two marks were sufficiently similar so as to be
reasonable likely to cause deception and confusion. He, therefore, set aside the order
of the Deputy Registrar and held that the respondent's mark could not be registered in
view of s. 8(a).

7. Now the respondent appealed from the judgment of Desai, J. This appeal was heard
by Chagla, C.J., and Shah, J., of the same High Court. The learned Judges of the
appellate bench took the view that there was no evidence that the appellant's mark
had acquired any reputation 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) might
apply to the case, the appellant had to establish that its mark had been registered in
respect of the same goods or description of goods for which the respondent had made
its application for registration. On this question the decisions of the Deputy Registrar
and Desai, J., are against the appellant. Before the appellate Judges of the High Court
the appellant proceeded on the basis that the goods were not of the same description.
Before us also the appellant has adopted the same attitude. That puts s. 10(1) out of

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the way. We are thus left only with the question whether s. 8(a) prevents the
registration of the respondent's mark.

9. In our judgment the view of the appellate Judges of the High Court that there was
no evidence that the appellant's trade mark had acquired a reputation among the
public cannot be sustained. In coming to this view, they relied on the affidavits filed by
the appellant wherein it was stated that "Glucovita is a well-known mark in the trade"
and denoted only the products of the appellant. We think that the learned appellate
Judges put too strict a meaning on the words "in the trade" in thinking that they
referred only to the tradespeople. In our view, these words may refer also to the
public. If they do, then of course, that would be evidence that the appellant's mark had
acquired a reputation among the public.

10. But apart from this, there is other evidence on the record to support the conclusion
that the appellant's mark had acquired a reputation among the public. The appellant
had in its opposition categorically stated that its mark had acquired a reputation
among the Indian buying public. There is no clear denial of this in the counter-
statement filed by the respondent. There is further ample evidence to show that the
appellant's goods under its mark 'Glucovita' were sold in very large quantities in small
containers of one pound and four ounces capacities. The small sizes of the containers
would indicate that the goods were sold to the public for if those sales had been to
tradespeople for industrial purposes, they would have been made in bulk on in much
larger containers. It appears that the appellant spent considerable sums for the
advertisement of its mark 'Glucovita' in ordinary popular journals and this would
indicate that it had a large sale for its goods among the general public. 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
reputation by its being made by a particular manufacturer and the consumers may
require not a particular commodity but the commodity made by a particular
manufacturer. It is only in the latter case that it could be said that the commodity
manufactured by a particular manufacturer has acquired a reputation among the
public. On those affidavits there is not even a suggestion that the public wanted the
'Glucovita' powder mixed with vitamins manufactured by the respondent and not by
anybody else." The respondent referred to by the learned Judge is the appellant before
us. We are unable to agree with the view expressed by them. It seems clear to us that
what is necessary is that the reputation should attach to the trade mark; it should
appear that the public associated that trade mark with certain goods. The reputation
with which we are concerned in the present case is the reputation of the trade mark
and not that of the maker of the goods bearing that trade mark. A trade mark may
acquire a reputation in connection with the goods in respect of which it is used though
a buyer may not know who the manufacturer of the goods is.

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12. In our view, therefore, it would be wrong in this case to say that the appellant's
trade mark had not acquired any reputation among the general public and that hence
there is no reasonable apprehension of their being confused or deceived by the use of
the respondent's proposed mark.

13. The second point on which the learned appellate Judges based themselves in
arriving at the conclusion that there was no reasonable apprehension of confusion or
deception was, as we have earlier stated, that there were various trade marks with a
prefix or suffix 'Gluco' or 'Vita' and that made it impossible to say that the common
features 'Glu' and 'Vita' were only associated with the appellant's products. This view
was founded on a passage which the learned appellate Judges quoted from Kerly on
Trademarks, 7th Edn. p. 624. That passage may be summarised thus : Where there
are a "series" of marks, registered or unregistered, having a common feature or a
common syllable, if the marks in the series are owned by different persons, this tends
to assist the applicant for mark containing the common feature. This statement of the
law in Kerly's book is based on In re : an application by Beck, Kollar and company
(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.

"When an application for registration is before the Registrar it frequently

happens that the search for conflicting marks reveals several marks having
some characteristic feature in common with the mark of the application,
which marks may stand on the Register in the name of one proprietor only,
or in the name of several different proprietors. At this stage, when the
matter is one between the applicant and the Registrar, the latter generally
has before him no evidence as to whether the registered marks are in actual
use or not, but in forming an opinion under Section 12 as to whether or not
confusion or deception is likely to arise, he is bound, I think, in the absence
of evidence to presume that, prima facie some at least of the registrations
have been effected bona fide by persons who at the date of their respective
applications were using or proposed in the near future to use their marks.
If, therefore, all the marks were owned by one proprietor, the Registrar
would presume that the latter was using a "series" of marks and judge the
conflict between the applicants' mark and each of the proprietor's marks
with this consideration in mind. Of course, if the registrations merely
consisted of one and the same word registered separately in respect of
several articles to be found in a single class of the Trade Marks Schedules,
the Registrar would in general regard all these registrations as but the
equivalent of a single registration covering all the items, for they would not

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 constitute a "series" as now under discussion. On the other hand, if the
registered marks found were owned by several different proprietors, this
would be a circumstance which might considerably assist the applicant, who
would be in a position to submit that the common characteristic was one
well recognised in marks in use in the particular trade. In short, when the
Registrar comes to compare the applicant's mark with the registered marks,
using the principles laid down in the "Pionotist" case the presence of marks
on the Register other than the one with which the comparison is being made
is regarded an one of the surrounding circumstances which he is required to
take into account.

"But when the same question comes before the Registrar in opposition
proceedings, it appears to me that he is no longer in a position to make any
presumption as regards the surrounding 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 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 attention to the other features of the
respective marks and to distinguish between them by those features. This principle
clearly requires that the marks comprising the common element shall be in fairly
extensive use and, as I have mentioned, in use in the market in which the marks under
consideration are being or will be used.

17. The series of marks containing the common element or elements therefore only
assist the applicant when those marks are in extensive use in the market. The onus of
proving such user is of course on the applicant, who wants to rely on those marks.
Now in the present case the applicant, the respondent before us, led no evidence as to
the user of marks with the common element. What had happened was that Deputy
Registrar looked into his register and found there a large number of marks which had
either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in
the register does not prove its user all. It is possible that the mark may have been
registered but not used. It is not permissible to draw any inference as to their user
from the presence of the marks on the register. If any authority on this question is
considered necessary, reference may be made to Kerly p. 507 and Willesden Varnish
Co. Ltd. v. Young & Marten Ltd. 39 R.P.C. 285 . It also appears that the appellant itself
stated in one of the affidavits used on its behalf that there were biscuits in the market
bearing the marks 'Glucose Biscuits', 'Gluco biscuits' and 'Glucoa Lactine biscuits'. But
these marks do not help the respondent in the present case. They are ordinary
dictionary words in which no one has any right. They are really not marks with a

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common element or elements. We, therefore, think that the learned appellate Judges
were in error in deciding in favour of the respondent basing themselves on the series
marks, having 'Gluco' or 'Vita' as a prefix or a suffix.

18. We have already said that in our view the mark 'Glucovita' has acquired a
reputation among the general buying public. The first question that then arises is
whether the marks 'Glucovita' and' Gluvita' are so similar as to be likely to cause
confusion to the buying public or deceive them. On this matter, we have not the
advantage of the view of the learned appellate Judges of the High Court. They 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 question. English cases proceeding
on the English way of pronouncing an English word by Englishmen, which it may be
stated is not always the same, may not be of much assistance in our country in
deciding questions of phonetic similarity. It cannot be overlooked that the word is an
English word which to the mass of the Indian people is a foreign word. It is well
recognised that in deciding a question of similarity between two marks, the marks have
to be considered as a whole. So considered, we are inclined to agree with Desai, J.,
that the marks with which this case is concerned are similar. Apart from the syllable
'co' in the appellant's mark, the two marks are identical. That syllable is not in our
opinion such as would enable the buyers in our country to distinguish the one mark
from the other.

20. We also agree with Desai, J., that the idea of the two marks is the same. The
marks convey the ideas of glucose and life giving properties of vitamins. The
Aquamatic case (Harry Reynolds v. Laffeaty's Ld.) 1958 R.P.C. 387, is a recent case
where the test of the commonness of the idea between two marks was applied in
deciding the question of similarity between them. Again, in deciding the question of
similarity between the two marks we have to approach it from the point of view of a
man of average intelligence and of imperfect recollection. To such a man the overall
structural and phonetic similarity and the similarity of the idea in the two marks is
reasonable likely to cause a confusion between them.

21. It was then said that the goods were not of the same description and that
therefore in spite of the similarity of the two marks there would be no risk of confusion
or deception. We are unable to accept this contention. It is true that we have to
proceed on the basis that the goods are not of the same description for the purposes of
s. 10(1) of the Act. But there is evidence that glucose is used in the manufacture of
biscuits. That would establish a trade connection between the two commodities,
namely, glucose manufactured by the appellant and the biscuits produced by the
respondent. An average purchaser would therefore be likely to think that the
respondent's 'Gluvita biscuits' were made with the appellant's 'Glucovita' glucose. This

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was the kind of trade connection between different goods which in the "Black Magic"
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 determing the question of likelihood of
deception or confusion. Trade connection between different goods is another such test.
Ex hypothesi, this latter test applies only when the goods are different. These tests are
independent tests. There is no reason why the test of trade connection between
different goods should not apply where the competing marks closely resemble each
other just as much as it applies, as held in the "Black Magic" and "Panda" cases, where
the competing marks were identical. Whether by applying these tests in a particular
case the conclusion that there is likelihood of deception or confusion should be arrived
at would depend on all the facts of the case.

23. It is then said that biscuits containing glucose are manufactured with liquid glucose
whereas the appellant's mark only concerns powder glucose. We will assume that only
liquid glucose is used in the manufacture of biscuits with glucose. But there is nothing
to show that an average buyer knows with what kind of glucose, biscuits containing
glucose are or can be made. That there is trade connection between glucose and
biscuits and a likelihood of confusion or deception arising therefrom would appear from
the fact stated by the appellant that it received from a tradesman an enquiry for
biscuits manufactured by it under its mark 'Glucovita'. The tradesman making the
enquiry apparently thought that the manufacturer of 'Glucovita' glucose was likely to
manufacture biscuits with glucose; he did not worry whether biscuits were made with
powder or liquid glucose. Then again it is stated in one of the affidavits filed by the
appellant that the respondent's director told the appellant's manager that the
respondent had adopted the name 'Gluvita' to indicate that in the manufacture of its
biscuits glucose was used. Those statements of behalf of the appellant are not denied
by the respondent. So, a trade connection between glucose and biscuits would appear
to be established. We are therefore of opinion that the commodities concerned in the
present case are so connected as to make confusion or deception likely in view of the
similarity of the two trade marks. We think that the decision of Desai, J., was right.

24. In the result, we set aside the order of the learned appellate Judges of the High
Court and restore that of Desai, J. The appeal is accordingly allowed. The appellant will
get the costs before the appellate Judges in this High Court and in this Court.

25. Appeal allowed.

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