Amritdhara Pharmacy Vs. Satyadeo Gupta
 INSC 172 (27 April 1962)
27/04/1962 DAS, S.K.
CITATION: 1963 AIR 449
Trade Mark--Likely to Receive or cause
confusionApproach to determine-Acquiescence-Effect of-Trade Marks Act, 1940 (V.
of 1940), ss.8, 10.
The respondent applied for registration of
the trade name "Lakshmandhara" in relation to the medicinal
preparation manufactured by him at Kanpur since 1923. It was admitted that the
respondent's product was mainly sold in the State of Uttar Pradesh. The
appellant opposed the registration on the ground that it had an exclusive
proprietary interest in the trade mark "Amritdhara" in relation to a
similar medicinal preparation which had acquired considerable reputation since
1903 and that the respondent's trade name "Lakshmandhara" was likely
to deceive and cause confusion and therefore the registration was prohibited by
s. 8 of the Trade Marks Act.
The Registrar of Trade Marks held that there
was sufficient similarity between "Amritdhar'a' and
"Lakshamandhara" so as to cause confusion and it was likely to
deceive the public, but the acquiescence of the appellant in the use of the
trade name "Lakshmandhara" by the respondent in the relation to his
product for a long period to the knowledge of the appellant was special
circumstance under s. 10(2) entitling the respondent to have his name
registered along with the appellant's trade name. He, however, confined the
registration to sales with the State of Uttar Pradesh.
Both the appellant and the respondent
appealed to the High Court which allowed the respondent's appeal holding that
the words "Amrit" and "dhara" were common words in the
Hindi language as also the words "Lakshman" and "dhara" and
that there was no possibility of any Indian confusing the two ideas. The High
Court further held there had been honest concurrent user by the respondent.,,
On the question of acquiescence it held against the respondent. On appeal by
Held, that the question whether a trade name
is likely to deceive or cause confusion by its resemblance to another al.
ready registered is a matter of first
impression and one for decision in each case and has to be decided by taking an
over. all view of all the circumstances. The standard of comparison to be
adopted in judging the resemblance is from the point of 485 view of a man of
average intelligence and imperfect recollection.
Pianotist Co.'s Application, (1906) 23 R. P.
C. 774, referred to.
Corn Products Refining Co., v. Shangrila Food
Product8 Ltd.,  1 S. C. R. 968, referred to.
Held, further, that the two names as a whole
should be considered for comparison and not merely the component words thereof
William Bailey (Birmingham) Ltd.'8 application,
(1935) 52 R.
P. C. 137, referred to.
Held, also, that in the present case the
similarity in the two name in respect of the same description of goods was
likely to deceive or cause confusion; but the facts found by the Registrar
established the plea of acquiescence so a to bring the case within sub-s.(2) of
s. 10, and the Registrar was right in imposing the limitation which he
CiviL APPELLATE JURISDICTION: Civil Appeal
No. 22 of 1960.
Appeal by special leave from the judgment and
order dated March 19, 1958, of the Allahabad High Court in F. A. No. 62 of
S. N. Andley, Rameshwar Nath and P. L. Vohra,
for the appellant.
G. S. Pathak, S. K. Kapur, B. N. Kirpal and
Ganpat Rai, for the respondent.
1962. April 27. The Judgment of the Court was
delivered by S. K. DAs, J.-This is an appeal by special leave granted by this
Court on December 8, 1958. On July 19, 1950, Satya Deo Gupta, respondent before
us, made an application under a. 14 of the Trade Marks Act, 1940 (Act V of
1940) (hereinafter referred to as the Act) for registration of the trade name
of a biochemical medicinal preparation, commonly known as 'Laksbmandhara', in
Class 5 of the Fourth Schedule to the Trade 486 Marks Rules, 1942. The
application was made by the respondent as the sole proprietor of Rup Bilas
Company situate, at Dhankutti in Kanpur. The averments made in the application
were that the said medicinal preparation had been in use by the name of
"Lakshmandhara' since 1923 and was sold throughout the length and breadth
of India as also in some foreign markets; the mark or name 'Lakshmandhara' was
said to be distinctive to the article, and it was stated that the approximate
annual turnover was Rs. 40,000/-.
Notice of the application was given by the
Registrar of Trade Marks, Bombay, and the Amrit dhara Pharmacy, a limited
liability company and appellant before us, filed an application in opposition.
In this application the appellant stated that the word 'Amritdhara' was already
registered as a trade name for the medicinal preparation of the appellant, and
that medicinal preparation was introduced in the market so far back as in the
year 1901; on account of its great popularity many people advertised similar
medicines with slight variations of name to pass off their goods as 'Amritdhara'.
It was averred that the composite word Lakahmandhara' was used to denote the
same medicine as Amrit, dhara'; and the single word dhara , it was stated, was
first used in conjunction with 'Amritdhara' to denote the medicine of the
appellant and the medicine 'Lakahmandhara' being of the same nature and to
quality could be easily passed off as 'Amritdhara' to the ultimate purchaser.
The appellant contended that as 'Amritdhara' was already registered and
'Lakshmandhara' being a similar name was likely to receive the public,
registration should be refused.
On behalf of the respondent a
counter-affidavit was made in which it was stated that "Amritdhara' and
Lakshinandhara' were two distinctly different names and no one could pass off
one for the other.
487 It was further stated that during the
long period of introduction and sale of Lakshmandhara' since 1923, no objection
was ever raised from any quarter, from the appellant or anybody else, to the
use of the name 'Lakshmandhara'. It was denied by the respondent that the
composite word 'Lakshmandhara ' was likely to deceive the public or could by
any stretch of imagination be taken or mistaken for 'Amritdhara'. The
respondent further alleged that the single word 'dhara' had no particular
significance in relation to the medicine, nor did that word mean or convey any
special or exclusive meaning or effect in relation to the medicine. It was also
stated that apart from the difference in name, the phial, label and packing of
'Lakshmandhara' had exclusive designs of their own and were not likely to be
confused with 'any other medicine of similar nature, least of all with
'Amritdhara' whose packing was distinctly different in colour, design and
The Registrar of Trade Marks dealt with the
application and the opposition thereto by his order dated September 10, 1953.
It appears that apart from the affidavits filed, no other evidence was led on
behalf of either party; but certified copies of certain decisions in earlier
cases (to which the respondent was not, however, a party) given in favour of
the appellant in support of its claim of infringement of its registered trade
mark 'Amritdhara' were filed. A list of such cases has been printed as annexure
'A'. These cases showed that a number of medicines with the word 'Amrit' or
'dhara' as part of their names had been introduced in the market since 1947;
and the appellant 'successfully took action against them for infringement of
its trade mark. Even in the Trade Marks Registry the appellant successfully
opposed the introduction of names which contained the word 'dhara' as part of
the trade name.
A question has 488 been raised before us
whether the Registrar of Trade Marks was justified in taking into consideration
the decisions in those cases. To that question we shall advert later. The
Registrar found that in 1901 Pandit Thakur Datta Sharma commenced to do
business at Lahore in a particular ayurvedic medicine which was meant for
alleviation for of headaches, diarrohea, constipation and other complaints.
This medicine was first sold under the mark 'Amrit Ki Dhara', but in 1903 the
name was changed to "Amritdhara', Pandit Thakur Datta Sharma formed a
limited liability company in 1942 and the name 'Amritdhara' became a well-known
popular name for the medicine. The sale of the medicine went up to about Re. 4
lacs a year. The business was done in Lahore but when partition came in 1947,
the appellant established its business in Dehradun. The Registrar expressed the
view that if the matter had rested on s. 8 and s. 10(1) of the Act, he world
have no hesitation in allowing the opposition and dismissing the application.
This could only mean that the Registrar was of the view that the name
'Lakshmandhara' so nearly resembled the trade mark 'Amritdhara' that it was
likely to deceive the public or cause confusion to the trade. We are saying
this because the High Court through that the Registrar did not express his own
opinion whether the name 'Lakshmandhara' was likely to cause deception to the
public or confusion to the ' trade. The respondent, however, relied also on two
other circumstances, viz. (a) honest concurrent user of the name
'Lakshmandhara' since 1923, and (b) acquiescence on the part of the appellant
in the user of the name Lakshmandhara'. The respondent contended that these two
circumstances brought the case Within the meaning of special circumstances' in
A. 10(2) of the Act, which permitted the registration by more than one
Proprietor of trademarks which are identical or 489 nearly resemble each other,
subject to such condition and limitations, if any, as the Registrar might think
fit to impose. On the point of honest concurrent user the Registrar found in
favour of the appellant.
As to acquiescence he, however, found in
favour of the respondent and expressed his finding in these words.
"In the case before me it is not
disputed that the applicant commenced his user in a small way in 1923 and it
may even be said that up to about 1942 the applicant's user was insignificant.
In paragraph 12 of the applicant's affidavit dated the 30th March, 1953 he has
given details of advertisements in directories, pamphlets, newspapers etc. in
which both the applicant's and the opponents' marks were advertised. The facts
given in the affidavit go to show that from 1938 right up to the date of the
applications by the applicant he has been advertising through mediums which
were common to both the applicant and the opponents. Here we have a case in
which Pandit Thakur Datta Sharma states that he had no notice of the
applicant's mark. He has, however, admitted that he had about 12 persons in his
factory which constituted the clerical staff and amongst them were persons who
were in charge of advertising the opponents mark. It seems to me that the
opponents and their agents were well aware of the advertisements by the
applicant and did not raise any protest till the applicant's mark was
advertised in the Trade Mark Journal. In other words the opponents stood by
and, allowed the applicant to develop his business and, as I have shown, from
small beginning he began to sell these medicines to the extent of about Rs.
43,000/-in 1949. In my opinion, this is 490 acquiescence which would come
under, the phrase 'or other special circumstances' in section 10(2) of the Trade
Marks Act and, that appears to me to be fatal to the case of the
opponents." Before the Registrar it was admitted on behalf of the
respondent that his goods were sold mainly in, Uttar Pradesh and there were, at
the most, only sporadic sales in other States. Taking that circumstance into
consideration the Registrar passed an order allowing registration of
'Lakshmandhara' for sale in the State of Uttar Pradesh only.
From the decision of the Registrar two
appeals were referred to the High Court of Judicature at Allahabad under s. 76
of the Act: one appeal Was referred by the respondent and' the other by the
appellant. The respondent complained of the registration being limited to Uttar
Pradesh only and the appellant pleaded that registration should: have been
refused altogether, The learned Judges of the High Court held that the words
'Amrit' and 'dhara' were common, words in the Hindi language and the combined
word 'Amritdhara' meant current of nectar' or the flow of nectar'; the two
words 'Lakshman' and 'dhara'were also well-known common words and combined,
together they meant "current or flow of Lakshman'. The learned Judges,
"Thereis no possibility of any Indian
confusing the two ideas. Even phonetical differences are wide enough not to
confuse anybody. The claim of the Amritdhara pharmacy that both the words Amrit
and dhara' have become so associatedwith their goods that the use of each part
separately or in any combination is' likely to mislead is an, untenable claim.
The whole phrase 'Amritdhara' had been registered and the Monopoly' has to be
491 confined only to the use of the whole word.
The words of common language like
"Amrit' and 'dhara' cannot be made the monopoly of any individual. We, therefore
see no reason to disallow registration of the trade mark "Lakshmandhara'.
" As to honest concurrent user from 1923 to 1942 the learned Judges again
held in favour of the respondent. But on the point acquiescence they held
against the respondent and found in favour of the appellant. They said that
from the fact that both the medicines were being advertised in-the same
journals or periodicals it did not, following that the attention of the
appellant was, drawn to@ the use of the word 'Lakshmandhara' by the respondent.
In view, however, of their finding that the two names were not likely to cause
any confusion and that the' respondent had been an honest concurrent user from
1923 onwards, they held that there was no justification for refusing registration
to the trade mark 'Lakshmandhara' for the whole of India. They accordingly
allowed the appeal of the respondent and dismissed that of the appellant by
their judgment dated March 19, 1958. The appellant then obtained special leave
from this Court and the present appeal has been filed in pursuance of the leave
granted by this court.
Two points have been agitated before us. The
first point is whether the name 'Lakshmandhara' was likely to deceive the
public or cause confusion to trade within the meaning of s. 8 and s. 10 (1) of
the Act. The second point is whether there was Such, acquiescence on) behalf of
the appellant in the use of the name 'Lakshmandhara' in the. State of Uttar
Pradesh as to bring it within the, expression 'special circumstances' mentioned
in sub-s. 10 of the Act. We shall deal with these two points in the order in
which we have stated them, 492 We may first read the relevant sections of the
Act, viz.s. 8 and 10.
8. Prohibition of registration of certain
matter No trade mark nor part of a trade mark shall be registered which
consists of, or contains, any scandalous design, or any matter the use of which
would.(a) by reason of its being likely to deceive or to cause confusion or
otherwise, be disentitled to protection in a Court of justice ; or (b) be
likely to hurt the religious susceptibilities of any class of the citizen of
India or (c) be contrary to any law for the time being in force, or to
10. Prohibition of registration of identical
or similar trade mark.-(1) Save as provided in sub-section (2), no trade mark
shall be registered in respect of any goods or description of goods which is
identical with a trade mark belonging to a different proprietor and already on
the register in respect of the same goods or description of goods or which so
nearly resembles such trade mark as to be likely to deceive or cause confusion.
(2) In case of honest concurrent use or of
other special circumstances which, in the opinion of the Registrar, make it
proper so to do he may permit the registration by more than one proprietor of
trademarks which are identical or nearly resemble each other in respect of the
same goods or description of goods, subject to such conditions and limitations
if any, as the Registrar may think fit to impose.
(3) 493 It will be noticed that the words
used in the sections and relevant for our purpose are "likely to deceive
or cause confusion." The Act does not lay down any criteria for
determining what is likely to deceive or cause confusion.
Therefore, every case must depend on its own
particular facts, and the value of authorities lies not so much in the actual
decision as in the tests applied for determining what is likely to deceive or
cause confusion. On an application to register, the Registrar or an opponent
may object that the trade mark is not registerable by reason of cl. (a) of s.
8, or sub-s. (1) of s. 10, as in this case. In such a case the onus is on the
applicant to satisfy the Registrar that the trade mark applied for is not
likely to deceive or cause Confusion. In cases in which the tribunal considers
that there is doubt as to whether deception is likely, the application should
be refused. A trade mark is likely to deceive or cause confusion by the
resemblance to another already on the Register if it is likely to do so in the
course of its legitimate use in a market where the two marks are assumed to be
in use by traders in that market. In considering the matter, all the
circumstances of the case must be considered. As was observed by Parker, J. in
Pianotist Co. s Application (1), 'which was also a case of the comparison of
two words" you must take the two words. You must Judge 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 all the surrounding
circumstances and you must further consider what is likely to happen if each of
those trademarks is used in a normal way as a trade mark for the goods of the
respective owners of the marks (1) (1906) 23 R. P. C. 774,777.
For deceptive resemblance two important
questions are: (1) who are the persons whom the resemblance must be likely to
deceive or confuse, and (2) what rules of comparison are to be. adopted in
judging whether such resemblance exists. As to confusion, it is perhaps an
appropriate description of the state of mind of a customer who, on seeing a
mark thinks, that it differs from the mark on goods which' he has previously
bought, but is doubtful whether that impression is Dot due to imperfect
recollection. (See Kerly on Trade Marks, 8th edition, p. 400.) Let us apply
these tests to the facts of the case under our consideration. It is not
disputed before use that the two names 'Amritdhara' and 'Lakahmandhara' are in
use in respect of the same description of goods, namely, a medicinal
preparation for the alleviation of various ailments, Such medicinal preparation
will be purchased mostly by people who instead of going to a doctor wish to
purchase a medicine for the quick alleviation of ;their suffering, both
villagers and townsfolk, literate as well as illiterate. As we said in Corn
Products Refining Co. v. Shangrila Food Products Ltd (1); the question has to
be approached from the point of view of a man of average intelligence and
imperfect recollection. To such a man the overall structural and phonetic
similarity of the ,two names 'Amritdhara' and 'Lakshmandbara' is, in our,
opinion likely. t o deceive or ; cause confusion. We must consider, the overall
similarity of the two composite words 'Amritdhara' and 'Lakshmandhara'. We do
not think that the learned Judges of the High Court were right in Paying that
no Indian would mistake one 'for the other. An unwary purchaser of average
intelligence and imperfect recollection would not, as the High Court supposed,
split the name into its component parts and consider the etymological meaning
thereof or 495 even consider the meanings of the composite words as 'current of
nectar' or current of Lakshman'. He. would go more by the overall structural
and phonetic similarity and the nature of the medicine he has previously
purchased, or has been told about, or about which has other vise learnt and
which he wants to purchase. Where the trade relates to goods largely sold to
illiterate or badly educated persons, it is no answer to say that a person
educated in the Hindi language would go by the entymological or ideological
meaning and, see the difference between 'current of nectar' and current of Lakshman'.
'Current of Lakshman in a literal sense has no meaning to give it meaning one
must further make the inference that the 'current or stream' is as pure and
strong as Lakshman of the Ramayana. An ordinary Indian villager or townsmen
will perhaps know Lakshman, the story of the Ramayana being familiar to him but
we doubt if he would etymologine to the extent of seeing the so called
ideological difference between 'Amritdhara'and 'Lakshmandhara'.. He would go
more by the similarity of the two names in the context of the widely known
medicinal preparation which he wants for his ailments.
We agree that the use of the word 'dhara'
which literally means 'Current or stream' is not by itself decisive of the
matter. What we have to consider here is the overall similarity of the
composite words, having regard to the circumstance that the goods bearing the
two names are medicina l preparations of the same description. We are aware
that the admission of a mar is not to be refused, because unusually stupid
people, "fools or idiots", may be deceived. A critical comparison of
the two names may disclose some points of difference. but an unwary purchaser
of average intelligence and imperfect recollection would be deceived by the
overall similarity of the two names having regard 496 to the nature of the
medicine he is looking for with a somewhat vague recollection that he had
purchased a similar medicine on a previous occasion with. a similar name. The
trade mark is the whole thing the whole word has to be considered a the case of
the application to register 'Erectiks' (opposed by the proprietors of the trade
mark 'Erector') Farwell, J. said in William Bailey (Birmingham) Ltd.8
Application (1) :
"I do not think it is right to take a
part of the word and compare it with a part of theother Word; one word must 'be
considered as a whole and compared with the other word as a
whole................ I think it is a dangerous method to adopt to divide the
word up, and seek to distinguish a portion of it from a portion of the other
Nor do we think that the High Court was.
right in thinking that the appellant was claiming a. monopoly in the common
Hindi word 'dhara'. We do not think that is quite the position here. What the
appellant is claiming is its right under s. 21 of the Act, the exclusive right
to the use of its trade mark, and to oppose the registration of a trade mark
which go nearly resembles its trade mark that it is likely to deceive or cause
A large number of decisions relating to the
use of composite words, such as Night Cap and RedCap, Limit and Summit, Rito
and Lito, Notrate and Filtrate, etc. were cited in the High Court. Some more
have been cited before us. Such decisions, examples of deceptive resemblance
arising out of contrasted words, have been summarised at page 429 to 434 in
Karly on Trade Marks, 8th Edition. No useful purpose will be served by
referring to them all. As we have said earlier, each case must be decided or
its own fact. What degree of' (1) (1935) 52 R.P.C. 137.
497 resemblance is necessary to deceive or
cause confusion must the nature of things be incapable of definition a priori.
As to the decisions in annexure 'A', it has
been argued before us that they were not at all admissible by reason of ss. 40
to 43 of the Indian Evidence Act, 1872. On behalf of the appellant it has been
contended that they were admissible under s. 13 of the Evidence. Act as showing
the particular instances in which the appellant claimed its right under s. 21
of the Act. We consider it unnecessary to decide this question for the purposes
of this case because those decisions even if they are admissible under s. 13 do
not throw any light on the question whether 'Amritdhara' and 'Lakshmandhara' so
nearly resemble each other as to cause deception or confusion. That is a,
question which we must determine as a case of first impression and irrespective
of the earlier decisions.
On a consideration of all the circumstances,
we have come to the conclusion that the overall similarity between the two
names in respect of the same description of goods was likely to cause deception
or confusion within the meaning of s. 10(1) of the Act and Registrar was right
in the view he expressed. The High Court was in error taking a contrary view.
We know go the second question, that of
acquiescence. Here again we are in agreement with the Registrar of Trade Marks,
who in a paragraph of his order quoted earlier in this judgment has summarised
the facts and circumstances on which the plea of acquiescence was based. The
matter has been put thus in Halsbury's Laws of England, Vol. 32 (second
edition) pages 659-657, paragraph 966.
" If a trader allows another person who
is acting in good faith to build up a reputation under a trade name or mark to
which he has rights, he may lose his right to complain, and may even be
debarred from himself using such name or work. But even long user by another,
if fraudulent, does not affect the plaintiff's right to s. final injunction on
the other hand prompt warning or action before. the defendant has built up any
goodwill may materially assist the plaintiff 's case".
We do not think that there was any fraudulent
user by the respondent of his trade name 'Lakshmandbara'. The name was first
used in 1923 in a small way in Uttar Pradesh. Later it was more extensively
used and in the same journals the two trade marks were publicised. The finding
of the Registrar is that the appellant and its agent were well aware of the advertisements
of the respondent, and the appellant stood by and allowed the respondent to
develop his business till it grew from a small beginning in 1923 to an annual
turnover of Rs. 43,000/in 1946. These circumstances establish the plea of
acquiescence and bring the case within sub-s. (2) of s. 10, and in view of the
admission made on behalf of the respondent 'that his goods were sold mainly in
Uttar Pradesh, the Registrar was right in imposing the limitation which he
For these reasons, we would allow the appeal,
set aside the Judgment and order of the High Court, and restore those of the
Registrar of Trade Marks, Bombay, dated September 10.
1953. In the circumstances of this case,
there will be no order for costs.