F. Hoffmann-La Roche & Co. Ltd. Vs.
Geoffrey Manners & Co. Pvt. Ltd.  INSC 226 (8 September 1969)
08/09/1969 RAMASWAMI, V.
CITATION: 1970 AIR 2062 1970 SCR (2) 213 1969
SCC (2) 716
The Trade and Merchandise Act, 1958, ss.
12(1) and 9(1)--Vitamin preparations--'DROPOVIT" whether a trade mark
deceptively similar to 'PROTOVIT' so as to offened s. 12(1)--'DROPOVIT' whether
a descriptive word or an invented word for the purpose of s. 9(1)--Tests.
In 1946 the trade mark 'PROTOVIT' was
registered for one of the vitamin preparations manufactured by the appellant
company. In 1957 the respondent company applied for registration of its mark
'DROPOVIT' in respect of "medical and pharmaceutical preparations and
substances". The application was granted. When the appellant came to know
about this trade mark it asked the respondent to alter it.
On the respondent's refusal to do so, the
appellant in 1959, applied to the Registrar for rectification of the Register
of Trade Marks by removal there form of the respondent's trade mark. Later the
appellant amended its application by adding the ground that DROPOVIT' was not
an invented word.
The Joint Registrar by letter dated August 5,
1961 rejected the appellant's application for rectification. The appellant went
in appeal to the Bombay High Court. During the hearing of the appeal the
respondent restricted the designation of goods covered by the mark 'DROPOVIT'
to "medical preparations and, substances containing principally vitamins."
The Single Judge as well as the Division Bench decided in favour of the
respondent. The appellant came to this Court with certificate. The questions
that fell for consideration were: (i) whether the word 'DROPOVIT' was
deceptively similar to the word 'PROTOVIT' and thus offended the provision of
s. 12(1) of the Trade and Merchandise Act, 1958; (ii) whether the word
'DROPOVIT' was an invented or a descriptive word for the purpose of s. 9(1) of
HELD: The appeal must be dismissed.
(i) In order that a trade mark may be found
deceptively similar to another it is not necessary that it 'should be intended
to deceive or intended to cause confusion. It is its probable effect o.n the
ordinary kind of customers that one has to consider. For this purpose it is
necessary to apply both the visual and phonetic tests. It is also important
that the marks should 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 the word in the other case there is no sufficient
similarity to cause confusion. The true test is whether the totality of the
trade mark is such that it is likely to cause deception or confusion or mistake
in the minds of the persons accustomed to the existing trade mark.
[216 H; 217 G--H; 218 E] Parker Knoll Ltd. v.
Knoll International Ltd.,  R.P.C. 265 at 274, Pianotist Co. Ltd.'s
application 23 R.P.C. 774, 777, Aristoc Ltd. v. Rysta Ltd., 62 R.P.C. 65 at 72
and Toklon Ltd. v. Davidson & Co., 32 R.P.C. 133 at 136, applied.
The terminal syllable 'VIT' in the two marks
'DROPOVIT' and 'PROTOVIT' was both descriptive and, as the evidence showed.
common to the trade. If greater regard was paid to the uncommon ejement in Jp
CI/70--2 214 the two words it was difficult to, hold that one would be mistaken
for or confused with the other. The letters 'D' and 'P' in DROPOVIT' and. the
corresponding letters 'P' and 'T' in 'PROTOVIT' could not possibly be slurred
over in pronunciation and the words were so dissimilar that there was no
reasonable probability of confusion between the words either from the visual or
phonetic point of view. This was all the more so because the preparations from
their very nature were likely to be purchased on the prescription of doctors,
and under r. 61(2) of Drug Rules, 1945 could be sold only by licensed' dealers
SO that the possibility of confusion would be reduced to a considerable extent.
[219 A--C, E] (ii) It could not be accepted that the Word 'DROPOVIT' would
strike an ordinary person knowing English as meaning 'DROP OF VITAMINS'. The
appellant's original application for rectification did not contain the ground
that the word 'DROPOVIT' was descriptive. It was therefore reasonable to
presume that it did not strike even the legal advisers of the appellant as
descriptive. It was true that the word 'DROPOVIT' was coined out of words
commonly used by and known to ordinary persons knowing English. But the
resulting combination produced a new word, a newly coined word which did not
remind an ordinary person knowing English of the original words out of which it
was coined unless he was so told or unless at least he devoted some thought to
it. It followed that the word 'DROPOVIT' being an invented word was entitled to
be registered as a trade mark and was not liable 'to be removed from the
Register on which it already existed. [220 H-221 D]
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, 1. M. Chagla,.Anoop Singh, M.N.
Shroff, for 1. 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
Miscellaneous 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 respondent 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 in Class V in respect of 215
"Pharmaceutical preparations for human use and for veterinary use,
infants' and invalids' foods". The appellant thereafter used that mark on
multi-vitamin preparations in liquid tablet forms and its goods are being sold under
that mark at least since the year 1951.
On January 28, 1957 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 respondent'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 between the parties but on March 19, 1958 the respondents wrote
to the appellant refusing to alter its trade mark.
On January 21, 1959 the appellant applied for
rectification of the Register by removal there from 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
The amended application was opposed by the
respondent. . By his judgment dated August 5, 1961 the Joint Registrar 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. the
appeal the respondent restricted the designation of goods to "'medicinal
and pharmaceutical preparations 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 case 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 216
(b)the use Of Which would be contrary to any law for the time being in force;
or (c) which comprises or contains scandalous or obscene matter; or (d) which
comprises or contains 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
Section 12( 1 ) provides "Save as
provided in sub-section (3 ), no trade mark. shall be registered in respect. of
any goods or description of goods which is identical with or deceptively
similar to a trade mark which is already registered in the name of a different
proprietor in respect of the same goods. or descriptive of goods." Section
"On application made in the prescribed
manner to 'a High Court or to the Registrar by any person aggrieved, the
tribunal may make such order as it may think fit for cancelling or varying the
registration of a trade mark on the ground of any contravention, 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 question 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' confusion. It is its probable effect on the
ordinary kind of customers that one has to consider.
217 In Parker-Knoll Ltd, v. Knoll
International Ltd, (1) Lord Denning explained the words "to deceive,' and
the phrase "to cause confusion" as follows 1:
. "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
false representation to him and thereby cause him to believe a thing to be
true. which is false.
You may not do it knowingly, or
intentionally, but still you do it, and so you deceive him.
But you may cause confusion without telling
him 'a lie at all, and without making any false representation 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 ,fault of yours, but because he
has not the knowledge or ability to. distinguish it from the other pieces of
truth known to him. or because he may not even take the trouble to do so."
The tests for comparison of the two word marks were formulated by Lord Parker
in Pionotist Co.,Ltd.'s application (2) 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
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. If, considering all those
circumstances, you come to the conclusion that there will be a confusion--that
is to say, not necessarily that one man will be injured and the other will gain
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 phonetic tests. In Aristoc Ltd. v.
Rysta Ltd.(a) the House of Lords was considering 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.
(1) 1962 R.P.C. 265 at 274 (2) 23 R.P.C. 774
at 777 (3) 62 R.P.C. 65 at 72.
218 Viscount Maugham cited the following
passage of. Lord Justice Luxmoore in. the Court of Appeal, which passage, he
said, he completely accepted 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 bring the
former within the limits of section 12 of the Trade Marks Act, 1938, must
nearly always depend on first impression, for obviously a person who is
familiar with both words will neither be deceived nor confused; It is the
person who only knows. the one word and has perhaps an imperfect recollection
of it who is likely to be deceived or confused. .Little assistance, therefore,
is to be obtained from a meticulous comparison of the two words, letter 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 important 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 the
word in the other case there is no sufficient similarity to cause confusion.
The true test is whether the totality of the proposed trade mark is such that
it is likely to cause deception or confusion or mistake in the minds of persons
accustomed to the existing trade mark. Thus in Layroma case(1). Lord Johnston
".' ..... we are not bound to scan the
words as we would in a question of cooperation liter arum. It is not a matter
for microscopic inspection, but to be taken from the general and even casual
point of view of a customer walking into a shop." In order to decide
whether the word "DIROPOVIT" is deceptively similar to the word
"PROTOVIT" each of the two words must, therefore, be taken as a whole
word. Each of the two words consists of eight letters, the last three letters
are common, and in the uncommon part the first two are consonants, the next is
the same vowel '0', the next is a consonant and the fifth is again a common
vowel '0'. The 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
(1) Tokajon Ltd. v. Davidson & Co., 32
R.P.C. 133 at 136.
219 his affidavit dated January 11, 1961
Frank Murdoch, has referred to the existence on the Register of about 57 trademarks
which 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 mistaken for or confused with the other. The letters 'D' and
'P' in "DROPOVIT" and the corresponding letters 'P' and 'T' in
"PROTOVIT" cannot possibly be slurred over in pronunciation and the
words are so dissimilar 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 statement that the respondent was willing that the Court should direct
in exercise of its powers under s. 56(2) that the Registrar should limit the
respondent's trade mark "DROPOVIT" to medicinal and pharmaceutical
preparations and substances containing principally vitamins and that the appeal
should be decided on this basis. The question of deceptive similarity must
therefore be decided on the basis of the class of goods to which the two trademarks
apply subject to the limitation agreed to by the respondent. From the nature of
the goods it is likely that most of the customers would obtain a prescription.
from a doctor and show it to the chemist before the purchase. In such a case,
except in the event of the handwriting of the doctor being very bad or
illegible the chance of confusion is remote. As we have already observed the
evidence shows that there are as many as 57 trade marks in the Register of
Trade Marks with the suffix "VIT". Therefore, even an average
customer would know that in respect of Vitamin preparations the word
"VIT" occurs in large number of trademarks and because of this he
would naturally be on his guard and' take special care against making a
mistake. In this connection the provisions of the Drug Rules, 1945 are also
relevant. 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 them retail.
The question of confusion must hence be
determined on the basis that the goods with one of the two rival trademarks
would be sold only by such 'a licensed dealer and would not be available in any
other shop. The fact that the vendor would be a licensed dealer also reduces
the possibility of confusion to a considerable extent.
Having taken into account all circumstances
of the present case we are of the opinion that the High Court and the Joint
Registrar of Trade Marks were right in holding that there was no real tangible
danger of confusion if respondent's trade mark 220 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 "DROPOVIT" was not an invented 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 the following essential particulars, namely-- (c) one
or more invented 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 name
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 VITAMIN" 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
combination of three common words in English language and cannot, therefore, be
said to. be an invented .word. In Diabolo case(1) Parker J., has explained the
meaning of "invented word" as follows:
"To be an invented word within the
meaning of the Act a word must not only be newly coined, in the sense of not
being 'already current in the English language, but must be such as not to
convey an, 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 been assigned to it." In the case of De Cordova and others v. Vick
Chemical Co.(2) 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'
knowing 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 to draw the inference that the
word (1) 25 R.P.C. 565 (2) 68. R.P.C. 103.
221 "DROPOVIT" did: not strike even
Messrs Depending and Depenning the legal advisers of the appellant as being
descriptive. It was also pointed out that in his judgment Mr. Justice Tarkunde
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 reasoning of the High Court on this 'aspect of the case. If the
word "DROPOVIT" is not a descriptive word it must 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 knowing English. But the
resulting combination produces a new word, a newly coined word which does not
remind an ordinary person knowing English of the original 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 and 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.