9911796707
TMI Blog1964 (10) TMI 83X X X X Extracts X X X X X X X X Extracts X X X X ..... founded sometime in 1926 by one Dr. Sarvothama Rao who is now no more. When started, the business was called 'Navaratna Pharmacy' but from January, 1945 the name of the business was changed to the present one Navaratna Pharmaceutical Laboratories. From the very beginning the proprietors used the Trade, Mark "Navaratna" on the products which they manufactured and sold. In December, 1928 the word 'Navaratna' and the name 'Navaratna Pharmacy' as connoting the products of the respondent firm were registered by a declaration of ownership before the Registrar of Assurances, Calcutta. When a legislation substantially similar to the Indian Trade Marks Act, 1940 was enacted in the State of Cochin [Vide the Cochin Trade Marks Act 19 of 1199 (1944)] the respondent-firm registered the word 'Navarama' as a Trade Mark in respect of its medicinal preparations, on January 31, 1947 and another mark consisting of the words 'Navaratna Pharmaceutical Laboratories' to denote the same products on February 17, 1948. There is evidence that the respondent-firm has been having an expanding business in the products which it manufactures and has been selling the same under the above and other cognate names, a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... within whose jurisdiction the District Court was situated for the rectification of the register by deleting the respondent's mark. The appellant accordingly Mod O.P. No. 19 of 1952 in the High Court of Travancore-Cochin praying that the registration of the word "'Navaratna:" by itself or as part of other marks as a trade mark for goods belonging to the respondent be removed from the register. Civil Appeal 523 of 1962 arises out of the order of the High Court on this petition. This original petition No. 19 of 1952 was kept pending in the High Court after it was ready for hearing and was heard along with the appeal against the decree of the District Judge in Original Suit No. 233 of 1951. The original suit was, as stated earlier, for a perpetual injunction against the appellant for using the word "Navaratna" and the cause of action for that suit was stated to be that the plaintiff (respondent before us) being proprietor of the two registered trade marks "Navaratna" and "Navaratna Pharmaceutical Laboratories" had an exclusive right to the use of those marks for his medicinal preparations and that the said right was infringed by the defendant (appellant before us) advertising his good ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Judge found: (1) that 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; (2) that 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. To reach this finding the learned District Judge pointed out that it was brought to his notice that there were several concerns manufacturing and vending Ayurvedic preparations which had for a very long time past either used marks which included that word and had described their products by calling them "Navaratna" either alone or in combination with other words. The right of the plaintiff to relief on the ground of the infringement of the mark 'Navaratna' was therefore disallowed. (3) Dealing next with the question as to whether the mark "Navaratna Pharmaceutical Laboratories" could be validly registered and rights claimed for such a registration, the learned Judge answered it in the affirmative pointing out that no evidence was placed be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Trade Marks Act, 1940 which provided the positive qualifications for registrability of trade mark on the relevant date That section runs: "6.(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars namely:- (a) the name of a company, individual or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (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 surname or the name of a sect, caste or tribe in India; (e) any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the description in the above clauses, shall not be registerable except upon evidence of its distinctiveness. (2)For the purposes of this section, the expression distinctive' means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the attempt on Mr. Eno's part as an instance of that perpetual struggle which it seems to me is going on to enclose and to appropriate as private property certain little strips of the great open common of the English language. 'Mat is a kind of trespass against which I think the courts ought to set their faces." There can be no dispute either that the words 'pharmaceutical Laboratories" used in relation to medicinal preparations have "a direct reference to the character of the goods". Speaking of the mark "Torq-set" in respect of screws bolts, rivets and studs and fastening devices, Lloyd-Jacob 1. observed :(2) "Direct reference corresponds in effect to aptness for normal description". Judged by this test it could not be seriously contended that the prohibition in s. 6 (1) (d) would be attracted to this mark. In the present case, the words 'Pharmaceutical' and 'Laboratories' would have a direct reference to the character of the goods since the trade marks to which it is claimed to attach them are medicinal or pharmaceutical products. In this connection reference may also be made to a decision of the House of Lords to which Mr. Agarwala drew our attention. Yorkshire Copper Works ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d by the fact that there could not well be a geographical name less "inherently adapted" than Yorkshire to distinguish the goods of the Appellants. I do not propose to try to define this expression. But I would say that, paradoxically perhaps, the more apt a word is to describe the goods of a manufacturer, the less apt it is to dis- tinguish them: for a word that is apt to describe the goods of A, is likely to be apt to describe the similar goods of B. It is, I think, for this very reason that a geographical name in prima facie denied registrability. For, just as a manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim for his own a territory, whether country, county or town, which may be in the future, if it is not now, the seat of manufacture of goods similar to his to own. Of course, where the geographical area is very small there is a possibility of the inherent incapability,to attain distinctiveness becoming. attenuated, but we do not go into these details as they are unnecessary for our present purpose. The learned Counsel is therefore right in his submission that if the right of the respondent to the registration of his mark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ing and, indeed, learned Counsel for the appellant did not attempt to do so. What he, however, submitted was that on a proper construction of the proviso to s. 6(3) of the Act marks which from their very nature were inherently incapable of acquiring distinctiveness could not qualify for registration and the Courts below therefore erred in holding the marks which because of their being descriptive of the goods were inherently incapable of registration, to be registrable. This takes us to the consideration of the proper construction of the proviso. Closely examined, the arguments of the learned Counsel on this matter boils down to this that the proviso really did not introduce any standard of distinctiveness different from that which had been provided by the terms of S. 6(1) as explained by sub-s. (2) and the main part of sub-s. (3); in other words, the submission was that in cases where the mark fell within the prohibition of cl. (d) of sub-s. (1) it could not qualify for registration on the basis of acquired distinctiveness by long user as an "old mark" i.e., from before February 25, 1937. In support of this submission the learned Counsel relied on the view expressed by Mr. S. Ven ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e trade mark is not adapted to distinguish as aforesaid", could apply to cases where the trade mark has a direct reference to the character or quality of the goods or is otherwise not qualified for registration under cl.(d) of sub-s. (1). The entire argument on this part of the case is merely based on the use of the expressions 'adapted to distinguish as aforesaid' and 'distinctiveness' in the concluding portion of the proviso. It was not disputed that on the words of the proviso when the Registrar recorded a finding that the mark submitted for registration was "not adapted to distinguish as aforesaid", that is, that the mark did not fulfill the requirements of the tests suggested by the main part of sub-s. (3), he was authorised to permit evidence being led as to "acquired distinctiveness" and to register the mark, if the evidence satisfied him on this point. It was, however, urged that the word 'distinctiveness' in the expression "acquired dis- tinctiveness" had to be understood in the sense in which it is defined in sub-s. (2) where it is stated to mean practically " adapted to distinguish", the content and the significance of which is elaborated in sub-s. (3). The submission wa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... "adapted to distinguish" by the application of the tests laid down in s. 6(1) could still qualify for registration by proof of acquired distinctiveness. For the present purpose it is unnecessary to enter into an examination of the general nature of a proviso and of its function in statutes. It is sufficient to point out that it would not be a reasonable construction of any statute to say that a proviso which in terms purports to create an exception and seeks to confer certain special rights on a particular class of cases included in it should be held to be otiose and to have achieved nothing merely because of the word 'distinctiveness' used in it which has been defined elsewhere. A construction which would lead to old marks and new marks being placed on the same footing and being subjected to the same tests for registrability cannot, in our opinion, be accepted. In this connection, some support was sought for the cons- truction pressed upon us by the learned Counsel for the appellants by reference to s. 20 of the Act which reads : "(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark unl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... efore right in the finding that he recorded on this matter. Proof of user, the learned Judge hold, was not ipso jure proof of acquired distinctiveness 'and this is obviously right and does not advance the appellant's submission in regard to this question. Though there are some observations which might be wider, it substantially proceeded on ,accepting the finding of the Registrar regarding the applicant 'having failed to establish factual acquired distinctiveness for his mark. That case therefore does not assist the learned Counsel for the construction that he seeks to put on the proviso to s. 6(3). As we have pointed out earlier, there are concurrent findings of fact on this point that through long user from 1926 onwards, -the mark had become associated exclusively in the market with the pharmaceutical products manufactured by the respondent. The finding is not capable of being challenged before us and was not, -in fact, attempted to be challenged. From this it would follow that the respondents mark was rightly registered and that ,(1) 49 C.W.N. 42. he was entitled to protect an invasion of his right by seeking a perpetual injunction from persons who invaded those rights. The ne ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under s. 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufacture of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respon ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be "in the course of trade,, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide s. 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark ..... X X X X Extracts X X X X X X X X Extracts X X X X
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