1964 (10) TMI 83 - SC - Companies Law

Whether having regard to the method of packing adopted and theother features of the get-up etc. on which the defence had relied, the defendant was not guilty of passing off? Whether the word Navaratna was a common word in Ayurvedic phraseology and consequently the plaintiff could not claim any exclusive title to the use of that word by reason of his having used it for his products even though this had been for a number of years? Whether the mark Navaratna Pharmaceutical Laboratories could be validly registered? Held that - The conclusion reached by the Courts below that the appellants mark is deceptively similar to that of the respondents cannot be stated to be erroneous. Besides this question of deceptive similarity is a question of fact unless the test employed for determining it suffers from error. In the present case it was not suggested that the Courts below had committed any error in laying down the principles on which the comparison has to be made and deceptive similarity ascertained. As there are concurrent findings of fact on this matter we do not propose to enter into a discussion of this question de novo since we are satisfied that the conclusion reached is not unreasonable. Appeal dismissed

Issues Involved:
1. Validity of the respondent's claim as the registered proprietor of the Trade Mark "Navaratna Pharmaceutical Laboratories."
2. Whether the word "Navaratna" is descriptive and lacks distinctiveness.
3. Whether the appellant's use of "Navaratna Kalpa" constitutes infringement.
4. Claim for relief on the basis of passing off.
5. Whether the mark "Navaratna Pharmaceutical Laboratories" could be validly registered.
6. Whether the appellant's mark "Navaratna Pharmacy" is deceptively similar to the respondent's mark.
7. The applicability of Section 13 regarding disclaimer.
8. The distinction between passing off and infringement actions.
9. Whether the appellant's use constitutes honest concurrent use under Section 10(2).

Detailed Analysis:

1. Validity of the respondent's claim as the registered proprietor of the Trade Mark "Navaratna Pharmaceutical Laboratories":
The respondent firm, "Navaratna Pharmaceutical Laboratories," has been using the trade mark "Navaratna" since its inception in 1926. The trade mark was registered under the Cochin Trade Marks Act in 1947 and 1948. The firm applied for registration in Bombay, which was granted after no opposition was filed.

2. Whether the word "Navaratna" is descriptive and lacks distinctiveness:
The appellant argued that "Navaratna" is a common term in Ayurvedic preparations, indicating a particular composition, and thus cannot be exclusively used by the respondent. The District Judge found "Navaratna" to be a common word in Ayurvedic phraseology, disallowing the respondent's exclusive right to its use.

3. Whether the appellant's use of "Navaratna Kalpa" constitutes infringement:
The appellant opposed the registration of "Navaratna Kalpa" on the grounds that "Navaratna" was descriptive and lacked distinctiveness. The Registrar refused the registration of "Navaratna Kalpa," leading to the current proceedings. The High Court confirmed that the respondent's mark "Navaratna Pharmaceutical Laboratories" was validly registered and that the appellant's use of "Navaratna Kalpa" was deceptively similar.

4. Claim for relief on the basis of passing off:
The District Judge found that the appellant was not guilty of passing off due to the differences in packaging, get-up, and labeling, which clearly indicated the trade origin of the appellant's goods. The High Court affirmed this finding.

5. Whether the mark "Navaratna Pharmaceutical Laboratories" could be validly registered:
The District Judge held that "Navaratna Pharmaceutical Laboratories" had acquired distinctiveness through long use and was registerable under the proviso to Section 6(3) of the Trade Marks Act, 1940. The High Court affirmed this finding, noting that the mark had been used long before February 25, 1937.

6. Whether the appellant's mark "Navaratna Pharmacy" is deceptively similar to the respondent's mark:
The High Court found that "Navaratna Pharmacy" was deceptively similar to "Navaratna Pharmaceutical Laboratories." The similarity was sufficient to cause confusion or deception among consumers, thus constituting infringement under Section 21 of the Trade Marks Act.

7. The applicability of Section 13 regarding disclaimer:
The appellant argued that the respondent should disclaim exclusive rights to the word "Navaratna." However, this argument was not raised in the High Court or in the original petition, and thus was not considered by the Supreme Court.

8. The distinction between passing off and infringement actions:
The Supreme Court emphasized that passing off and infringement are distinct causes of action. Passing off is a common law remedy based on deceit, while infringement is a statutory remedy for the registered proprietor of a trade mark. The Court found that the differences in packaging and labeling were relevant to passing off but not to infringement.

9. Whether the appellant's use constitutes honest concurrent use under Section 10(2):
The appellant did not raise the issue of honest concurrent use in the lower courts. The Supreme Court declined to entertain this argument for the first time on appeal.

Conclusion:
The Supreme Court dismissed the appeals, upholding the High Court's findings that the respondent's trade mark "Navaratna Pharmaceutical Laboratories" was validly registered, that the appellant's use of "Navaratna Kalpa" constituted infringement, and that the respondent was entitled to a perpetual injunction. The Court also affirmed the distinction between passing off and infringement actions, and declined to consider the issue of honest concurrent use. The appeals were dismissed with costs.

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