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TMI Blog1962 (4) TMI 65X X X X Extracts X X X X X X X X Extracts X X X X ..... behalf of the respondent ’that his goods were sold mainly in Uttar Pradesh, the Registrar was right in imposing the limitation which he imposed. - Civil Appeal No. 22 of 1960 - - - Dated:- 27-4-1962 - Das, S. K. , Hidayatullah, M., Shah, J.C. ,JJ. For the appellant S. N. Andley, Rameshwar Nath and P. L. Vohra F or the respondent G. S. Pathak, S. K. Kapur, B. N. Kirpal and Ganpat Rai JUDGMENT 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 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 ma ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as distinctly different in colour, design and layout. 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 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 Tha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... arks 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 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 admit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion 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, 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 o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s Application (1906) 23 R. P. C. 774,777, 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 trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks 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 conside ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 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 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 ((1935) 52 R.P.C. 137) : "I do not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ption 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 Pr ..... X X X X Extracts X X X X X X X X Extracts X X X X
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