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TMI Blog1959 (10) TMI 30X X X X Extracts X X X X X X X X Extracts X X X X ..... in respect of "Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient in food; glucose for food." On the same date the appellant had also registered the same trade mark in class 5 in respect of "Infants' and invalids' foods." 4. The appellant opposed the respondent's application contending that it should be refused under ss. 8(a) and 10(1) of the Act to which opposition the respondent duly filed a counter statement. Both sides filed affidavits in support of their respective cases. 5. The Deputy Registrar held that Section 12 as for biscuits included in class 30 were not goods of the same description as glucose powder mixed with vitamins which was in the same class. He further held that the words 'Glucovita' and 'Gluvita' were not visually or phonetically similar and that there was no reasonable likelihood of any deception being caused by or any confusion arising from, the use of the respondent's proposed mark. In regard to s. 8(a), he held applying the cases of In re : an application by Smith Hayden & Coy. Ld. [(1945) 63 R.P.C. 97], that the syllable 'co' which was absent in the respondent's propos ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t the proposed mark of the respondent was not likely to confuse or deceive any one. In the result, they set aside the order of Desai, J., and restored that of the Deputy Registrar. The appellant has now appealed to this Court from the judgment of the appellate Judges of the High Court. 8. As we have earlier stated, the appellant had opposed the registration of the respondent's mark under s. 8(a) and also under s. 10(1). In order that s. 10(1) might apply to the case, the appellant had to establish that its mark had been registered in respect of the same goods or description of goods for which the respondent had made its application for registration. On this question the decisions of the Deputy Registrar and Desai, J., are against the appellant. Before the appellate Judges of the High Court the appellant proceeded on the basis that the goods were not of the same description. Before us also the appellant has adopted the same attitude. That puts s. 10(1) out of the way. We are thus left only with the question whether s. 8(a) prevents the registration of the respondent's mark. 9. In our judgment the view of the appellate Judges of the High Court that there was no evidence tha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . In these the respondent does not dispute, and in fact it assumes, that the appellant's mark had acquired a reputation among the public. We are, therefore, fully satisfied that the appellant has established that its mark has acquired a reputation among the buying public. 11. In connection with the question of reputation, the learned appellate Judges seem to have fallen into another curious error. They said "A commodity may acquire reputation by its being made by a particular manufacturer and the consumers may require not a particular commodity but the commodity made by a particular manufacturer. It is only in the latter case that it could be said that the commodity manufactured by a particular manufacturer has acquired a reputation among the public. On those affidavits there is not even a suggestion that the public wanted the 'Glucovita' powder mixed with vitamins manufactured by the respondent and not by anybody else." The respondent referred to by the learned Judge is the appellant before us. We are unable to agree with the view expressed by them. It seems clear to us that what is necessary is that the reputation should attach to the trade mark; it should appear tha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he Registrar is asked to draw is that traders and the public have gained such a knowledge of the common element or characteristic of the "series" that when they meet another mark having the same characteristic they will immediately associate the later mark with the "series" of the marks with which they are already familiar. But I do not think that this statement necessarily implies that the whole issue must be determined solely under the provisions of section 11, as I will now endeavour to explain. "When an application for registration is before the Registrar it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the Register in the name of one proprietor only, or in the name of several different proprietors. At this stage, when the matter is one between the applicant and the Registrar, the latter generally has before him no evidence as to whether the registered marks are in actual use or not, but in forming an opinion under Section 12 as to whether or not confusion or deception is like ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lar & Co's case. 15. We may also refer to In re : Harrods' application [52 R.P.C. 65], mentioned in the quotation from Beck, Kollar & Co's case [64 R.P.C. 76], set out in the preceding paragraph. It was there said at p. 70, 16. Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used. 17. The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the presen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hem both. He thought that the test down in what is called the "Ovax" case (In re : an application by Smith Hayden and Co. Ltd. [63 R.P.C. 97], should be applied and that the emphatic characteristic of the second syllable in the mark 'Glucovita' should decide that there was no likelihood of confusion arising. Desai, J., thought that the Deputy Registrar was wrong. 19. We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai, J., that the marks with which this case is concerned are similar. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ption though the goods were different. The application for registration was however refused under that section of the English Act which corresponds to s. 8 of our Act on the ground that the opponents, the manufacturers of shoes, had not established a reputation for their trademark among the public. 22. It is true that in both the above-mentioned cases the two competing trade marks were absolutely identical which is not the case here. But that in our opinion makes no difference. The absolute indentity of the two competing marks or their close resemblance is only one of the tests for determing the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesi, this latter test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the "Black Magic" and "Panda" cases, where the competing marks were identical. Whether by applying these tests in a particular case the conclusion that there is likelihood of deception or ..... X X X X Extracts X X X X X X X X Extracts X X X X
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