1. This is a trade mark appeal and it came to be filed under the following circumstances. The appellants, who are a Swiss company, applied to the Registrar of Trade Marks on the 2nd July 1942 for registration of their trade marks 'Ciba', 'Ciba' (monogram), 'Cibalgin', 'Ciba-zol' and 'Cibalbumin'. These marks are used in connection with pharmaceutical preparations. The mark 'Ciba' was registered on 24-8-1946, the mark 'Ciba' (monogram) was registered on 27-10-1944, the mark 'Cibalgin' was registered on 16-3-1944, the mark 'Cibazol' was registered on 27-7-1944 and the mark 'Cibalbumin' was registered on 16-3-1944. On the 22nd December 1943 an application was made by the respondents for registration of a label which contained the word 'Cibol'. This application was No. 90423. On the 2nd February 1945 they made two other applications Nos. 105450 and 105451 for registration of design and colour of the same name. The Cibol label was advertised on the 1st November 1947. This trade mark was amended so as to be only the word 'Cibol' and the amended trade mark was advertised on the 1st January 1949. On the 3rd November 1949 'Cibol' was registered by the Registrar of Trade Marks. On the 16th March 1950 the appellants applied for rectification of the registration. On the 26th March 1954 the Registrar ordered the rectification by removal of the respondents' trade mark. An appeal was preferred by the respondents to Mr. Justice Coyajee and Mr. Justice Coyajee reversed the decision of the Registrar, and the appellants have come in appeal.
2. The application of the appellants is under Section 46 of the Trade Marks Act, 1940, and Sub-section (1) of that section provides:
'On application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, the tribunal may make such-order as it may think fit for canceling or varying the registration of a trade mark on the ground of any contravention of, or failure to-observe a condition entered on the register in relation thereto.'
And Sub-section (2) provides:
'Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.'
The contention of the appellants is that the entry was made by the Registrar in favour of the respondents in contravention of Section 10(1) of the Act and therefore the entry should be removed from the register. Section 10(1) provides:
'Save as prescribed in Sub-section (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods of description of goods, or which so nearly resembles such trade mark as to be likely to deceive or cause confusion.' Broadly, the case of the appellants is that the trade mark 'Cibol' so closely resembles their trade mark 'Ciba' and that their trade mark 'Ciba' was already on the register on the 24th August 1946 and therefore the trade mark of the respondents should not have been registered on the 3rd November 1949. The appellants had also sought to bring their case under Section 8, but as we were satisfied that the case clearly fell within the ambit of Section 10(1) we did not permit Mr. Bhabha to elaborate his arguments with regard to his clients' case under Section 8.
3. Now, in considering both Section 46 and Section 10 it has got to be remembered that the primary duty of the Court is towards the public and the maintenance of the purity of the register. When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom particular goods are associated. It is therefore essential that the register should not contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry, whereas he is buying the goods at another person or firm or industry.
4. Now, there is no doubt on the record that the word 'Ciba' forms the dominant part of the name of the appellants and their subsidiary companies. It has been registered in every civilised country in the world and has been widely used during the past 40 years and more. It seems also to be fairly well established that the word 'Ciba' has come to mean throughout the world the product of the appellants. If that is so, then if the word 'Cibol' which has been used by the respondents for their pharmaceutical preparations resemble the word 'Ciba' and if 'Ciba' was already registered, then it seems to be clear that the subsequent registration of the word 'Cibol' does not seem to be justified in law. Now, the word 'Cibol' was used on one special preparation of the respondents which was an ointment which was originally advertised as a ringworm ointment and the question that we have to consider is whether a member of the public buying this ringworm ointment carrying the name Cibol was likely to be deceived into believing that he was buying the product of the appellants. Therefore, really on this aspect of the case the issue that we have to decide is a very narrow one. We have ourselves to consider whether there is any resemblance between the word Ciba and the word Cibol.
5. Now, the resemblance between the two words may be visual or phonetic and in our opinion in this particular case there is both a visual and a phonetic resemblance. The first syllable of Ciba and Cibol is identical, and with regard to sound or pronunciation, if the last syllable of Cibol is slurred over or not properly pronounced, there is a marked and close resemblance between the pronunciation of these two words. The learned Judge has taken the view that in the South of India -- and the respondents happen to be merchants carrying on business in the South -- the second syllable of a word is more emphasised or stressed than the first, unlike the ordinary English pronunciation. With respect to the learned Judge, it is difficult to understand how the learned Judge came to that conclusion, when the respondents themselves admit that what is of importance is not the second syllable but the first syllable. In their affidavit made on these proceedings in para. 7 they say:
'Phonetically, the distinction is very great and it does not lie in the slight accentuation of the terminal part of the words, as alleged. The real and important point about the two sets of names is the difference in the pronunciation of the first syllable.'
Therefore, if one has to attach greater importance to the first syllable rather than the second, then the resemblance, both visual and phonetical, between Ciba and Cibol becomes marked and pronounced.
6. Now, as has been said in trade mark cases and especially when the Court has to compare two different words, the matter in the ultimate analysis must depend upon first impression. In Aristoo Ltd. v. Rysta Ltd. (1945) 62 RPC 65 , the House of Lords was considering the resemblance between Aristoo and Rysta. At first blush it may appear that there is very little resemblance between these two words and yet the view taken was that considering the way words are pronounced in English the one was likely to be mistaken for the other, and Viscount Maugham cites a passage of Lord Justice Luxmoore in the Court of appeal which passage he says he completely accepts, and the passage is to the following effect:
'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, (which corresponds to Section 10), must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor con-fused. 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. The tendency to slur a word beginning with 'a' is generally speaking very common, and the similarity between 'Ryasta' and 'Ristoc' would, I think, be fairly obvious. It would not be surprising to learn that a person asking for 'Aristoc' stockings from a shop assistant who only knew 'Rysta' stockings had been supplied with the latter and vice versa.'
In this connection, the explanation given by the respondents for the use of this word must be taken into consideration, and in our opinion when one looks at this explanation it completely puts the respondents out of Court. As already pointed out, the respondents concede that it is the first syllable of the word Cibol which has greater importance and significance and the reason for their saying this is that in the label which they first applied for registration they had also used the word in Tamil character & in Devnagiri script and what is stated is that both in Tamil and in Devnagiri the word used is not 'Cibol' but 'Saibol' lScksy -Therefore, on their own showing and on their own admission the word they wanted to register was the word pronounced 'Saibol'. If that was the word they wanted to get registered, there is no reason whatever why they should have transliterated that word into English language by spelling it as 'Cibol'. By no stretch of imagination can it be said that the word pronoun red as 'Saibol' can possibly be spelt in English EiS 'Cibol'. Therefore, it is clear on the conduct of the respondents that the attempt was to have a word which approximated to the word associated with the products of the appellants. If there had been no such intention there was no reason why the respondents should not have applied for registration of the word 'Saibol' rather than of 'Cibol', and Mr. Bhabha has told us that his clients have not the slightest objection if the respondents amended the registration and registered the word 'Saibol' rather than 'Cibol', We suggested to Mr. Shah appearing for the respondents that he should avail himself of this offer, but for reasons best known to his clients the offer was rejected, and therefore we have this clear position before us that the respondents wanting to register a word which sounds in Tamil as 'Saibol' go to the Registrar and get a word registered which spells differently and which has a close resemblance to the trade mark of the appellants.
7. On this aspect of the matter it is also perhaps necessary to refer to the evidence given by a partner of the respondents before the Registrar. He was asked why out of the tens of thousands of words in the English language he happened to hit upon this word 'Cibol'; his answer was that he thought of 'Cibol' because 'C' stands for cuts, 'I' for itches, 'B' for boils and 'OL' for oil. The respondents must be congratulated on their ingenuity in thinking of this explanation. But apart from ingenuity there is no truth whatever in this explanation because 'Cibol' introduced into the world not a preparation for cuts, itches and boils, but a much simpler preparation for ringworms, and therefore at the time when the application for registration was made the respondents were not thinking of curing humanity of cuts, itches and boils, but only of ringworms. This explanation, in our opinion, is patently untrue and dishonest.
8. The learned Judge in coming to the conclusion that he did has attached great importance to the evidence given by the respondents of user of their goods. In doing so, the learned Judge overlooked the fact that if he was considering a case falling under Section 10, the evidence of user was entirely irrelevant. The only test that has to be applied when the Court is considering a case falling under Section 10 is the test of identity or resemblance. Even if the respondents could establish a long user and if the appellants could establish no user at all, if there was resemblance between the mark of the appellants and the respondents and if there was a likelihood of deception and if the appellants were first in the field and had their trade mark registered, then the respondents' trade mark could not be registered. The learned Judge has also taken into consideration the fact that although the respondents had proved large sales of their article, the appellants had failed to prove any case of actual deception. Here again, with very great respect to the learned Judge, he was in error because the approach under Section 10 is not the same as in a passing off action. As the authorities have said, it is not for a witness or a large number of witnesses to tell the Court whether there is likelihood of deception. The Court cannot abdicate its own function which is to decide on looking at the two trade marks and on considering them phonetically whether they resemble each other and whether there is likelihood of deception. That function cannot be discharged by a person in the witness-box. It is true that the absence of any evidence of deception may be a material fact which the Court may take into consideration but if the resemblance between the two marks is clear and obvious, then it is the duty of the Court to remove from the register a mark which is likely to cause deception. Mr. Justice Chitty in In re, Hill's Trade Mark (1893) 10 RPC 113, emphatically staled: 'I state my opinion that directly it is apparent that if any part of a trade mark is calculatedto deceive it is the duty of the Court to order it to be removed.'
9. Now let us see how this case on the part of the appellants is sought to be met by the respondents. The first rather curious contention put forward by Mr. Shah is that under Section 46 only a person aggrieved can apply for rectification, and it is stilted that the appellants are not a person aggrieved. It is difficult to conceive of a person more aggrieved than the appellants because the appellants' case is that the product of the respondents is likely to be sold as the product of the appellants, and Kerly on Trade Marks at p. 256 states that the phrase 'any person aggrieved' has been very liberally construed and that the persons who are aggrieved are all persons who are in some way or other substantially interested in having the mark removed -- where it is a question of removal from the register, or persons who would be substantially damaged if the mark remained. This definition clearly brings within its ambit the appellants,
10. The second contention in which there is much more force is that the appellants have come to file this application under Section 46 after considerable delay and no relief should be granted to them. It is true that the granting of relief under Section 46 is a discretionary relief, but it is equally true that the Legislature has not laid down any period of limitation for making an application under Section 49. Kerly at p. 271 states: 'The delay of the applicant in coming to the Court to ask for rectification of the register is not of itself any bar to his application, and the marks have been removed or varied after being registered for long periods to the knowledge of the applicant.....' But at p. 264 the learned author points out that the demerits of the applicant in any such case are irrelevant to the question whether rectification should be ordered or not, for the question is not between the applicant on the one hand and the respondent on the other, but between public and the respondent. But the learned author further points cut at p. 272 that where the objection alleged to a mark is that it to the same as that of the applicant, or that it has such resemblance to his as to be calculated to deceive, it will be some evidence against the applicant, on whom the burden lies of showing that the registration was made without sufficient cause, if he had stood by and allowed the registered proprietor to use the mark objected to for a length of time, especially if no case of actual deception is proved. But the learned author also points out that in such a case two things have got to be considered; first, what was the reason of the delay in the application to expunge; and, secondly, whether any substantial injury has been caused by the delay to the person who has registered. Therefore, the question of delay must be approached from this point of view whether the applicant stood by and thereby caused substantial injury to the respondent and the injury was so substantial that that injury would outweigh the interest of the public which the Court must consider where a trade mark is likely to deceive.
11. Now, on the question of delay certain facts are material. On the 31st October 1945 the agent in India Of the appellants wrote to the respondents that it had come to the notice to their clients Messrs. Ciba Ltd., of Basle that they had recently advertised a pharmaceutical preparation under the name 'Cibol', and they also pointed out that the appellants wore the owners of the well-known trade mark 'Cibazol' which had been registered under the-Trade Marks Act and it was considered that the word 'Cibol' would clash with the same and cause confusion in the trade and to the public. It will be remembered that by this date Cibazol had already been registered, although Ciba was registered a little later. Therefore, as far back as 1945 the respondents had notice that Messrs. Ciba Ltd., had pharmaceutical preparations which were sold in India.
Again, on the 12th December 1945 the agents of the appellants wrote to the respondents that they were not prepared to allow the use of a mark which so closely resembled theirs and was likely to cause confusion in the trade, and they said in the last paragraph of the letter that in the event of the respondents having applied for registration of the word Cibol the appellants must call upon the respondents to withdraw their application, as otherwise their clients would enter an opposition as soon as the mark was advertised in the Journal without further reference to them. To this the respondents replied on the 24th December 1945 informing the appellants that they had applied for registration of the trade mark 'Cibol'. Now, the Cibol label was advertised on the 1st November 1947 and the time for putting in an opposition under the rules is four months from that date, and the gravamen of the charge made by Mr. Shah against the appellants is that notwithstanding the letters written by the agent of the appellants, in fact no opposition was entered. But it must be remembered that what was advertised on the 1st November 1947 was the label Cibol which contained both the Tamil and Devanagiri word pronounced as 'Sai-bol'. The word to which the appellants really objected was only advertised on the 1st of January 1949 after the application made by the respondents had been amended so as to restrict the registration to the word 'Cibol'. It is true that even so the appellants could have opposed the registration of the respondents' trade mark within four months of the 1st of January 1949, but they did not do so. On the 16th June 1949 the agent of the appellants wrote to the Registrar of Trade Marks with regard to the advertisement of the old trade mark which had been advertised on the 1st November 1947 and pointing out that that trade mark had not yet been registered and asking for an extension of time for opposition. On the 7th July 1949 the Registrar declined to extend the time and asked the appellants to move for rectification of the register if and when the trade mark was registered. On the 29th December 1949 theappellants' agents asked for extension of time for filing the opposition with regard to the trade mark which had been amended to the word 'Cibol'. This application for extension of time was turned down by the Registrar on the 23rd January 1950 and then on the 16th March 1950 the application for opposition was made. We quite agree with Mr. Shah that the agents of the appellants could have been more diligent and they could have opposed the application for registration if they were so minded. But on the other hand, when the respondents complained of substantial injury by being allowed to sell their goods under this name, of having built up large sales and spent large amounts on advertisement, it should be pointed out that the respondents did this at their own peril, because they had been warned by the appellants as far back as October 1945. It hardly lies in the mouth of a party to come to the Court and say: 'I have been trading upon the reputation of the other side, by trading upon that reputation I have been making money, I have been warned that I should not so trade and yet I took the risk, and now protect me from my folly or my own dishonesty because the other side has delayed in coming to Court and I have a large stake in the sales which I am effecting by reason of using a trade mark which resembles the trade mark of another.' Therefore, the argument put forward by Mr. Shah of balance of convenience, of hardship, of equity, has no application on the facts of this case. It is not the case of an innocent party which seeks protection on the ground that owing to a long user it has built up a business which should not be destroyed by rectification of the register. As we have already pointed out the word 'Cibol' seems to have been deliberately selected by the respondents for no other purpose than for its resemblance with the word of the appellants. We say this because when we test the explanation given by the respondents as we have done for the use of this word, we can only come to the conclusion that the object in using the word was as just suggested by us.
12. The next contention put forward by Mr. Shah is much more ingenious and the contention is that for the purposes of Section 10(1) when you have to consider whether there is a trade mark already on the register, the point of time is not the date of registration of the respondents' trade mark, viz., the 3rd November 1949, but the date when the application for registration was made, viz., the 22nd December 1943, and what is urged is that on the 22nd December 1943, there was no trade mark of the appellants on the register and therefore Section 10(1) has no application. In support of this contention our attention is drawn by Mr. Shah to Section 16(1) which provides:
'When an application for registration of a trade mark has been accepted and either has not been opposed and the time for notice of opposition has expired, or having been opposed, has been decided in favour of the applicant, the Registrar shall, unless the application has been accepted in error, or unless the Central Government otherwise directs, register the said trade mark, and the trade mark, when registered, shall be registered as of the date of the making of the said application, and that date shall, subject to any directions made under Section 83 applicable to such trade mark, be deemed for the purposes of this Act to be the date of registration.'
So what Mr. Shah says is that under this section the date of the registration is not the 3rd November 1949 but the 22nd December 1943, and what is further urged by Mr. Shah is that once an application for registration of a trade mark has been accepted and has not been opposed and the time for notice of opposition has expired as in this case the Registrar had no option but to register the trade mark under Section 16(1). Mr. Shah says this is a mandatory section and there is an obligation upon the Registrar to register the trade mark, and it is said that the provision with regard to Section 10 (1) should be considered before acceptance of the application because under Section 14(1) it is open to the Registrar to refuse an application. It is only if he accepts it that it has got to be advertised and time has to be given for opposition. Therefore, according to Mr. Shah, if there is no bar under Section 10(1) at the date of the application, in other words, if there is no prior trade mark at the date of the application, and the application is accepted and there is no opposition to that application and the trade mark is registered under Section 16(1), then the trade mark is registered, as it were, at the date of the application and it is not open to a party to challenge that registration under Section 46 on the ground that there was a prior trade mark resembling the trade mark challenged if in fact there was no trade mark registered prior to the date o| the application. In our opinion, this contention is not tenable. Section 16(1), which is a procedural section, must be read subject to Section 10 (l) which is a substantive section, and Section 10(1) provides that no trade mark shall be registered which is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or which so nearly resembles such trade mark as to be likely to deceive or cause confusion. Therefore, when on the 3rd November 1949 there was a trade mark on the register, as admittedly there was, of the appellants, closely resembling the trade mark of the respondents, then there was a prohibition against the registration of the respondents' trade mark. Therefore Section 16(1), which makes it incumbent upon the Registrar to register a trade mark if there is no opposition must be read subject to the substantive provision of the Act which prohibits the registration of a trade mark under certain circumstances.
13. Turning to the merits, Mr. Shah has drawn our attention to the affidavits of 25 proprietors of chemists and druggists concerns who have stated that Cibol is easily recognised by their customers as a product of the South Indian Manufacturing Co., that it has nothing to do with the product of the appellants, and that there is no cause for deceit for their customers in view of the enormous varying factors between the products of the two concerns, their packing, price, etc. It is rather surprising that these eminent proprietors of chemists and druggists shops should be in a position to speak about the state of mind of all their customers. But apart from that, as we have already pointed out, we are not concerned with actual deception in this case; we are concerned in the language of the section with the likelihood of deception, and that is a fact to be judged by us and not by these eminent gentlemen. Our attention has also been drawn to eight affidavits of medical practitioners in the South who have told us that the skin ointment Cibol is moss elective in skin ailments for the last 12 years and they have been using this ointment in their dispensaries. We are not concerned, again, in this case with the efficacy of the respondents' medicament. What we are concerned with is whether in curing a large number of people of skin disease and bringing solace to many homes, the respondents are using a trade mark which is likely to deceive the public as being the trade mark of the applicants. The test in these matters has been laid down by Mr, Justice Parker in the case of In re Pianotist Co.'s Application (1906) 23 RPC 774 :
'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. Ill 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. If, considering all these 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.'
As has been stated earlier, the relief to be given under Section 46 is discretionary relief. The Registrar exercised the discretion in favour of the appellants and that fact ought considerably to weigh with the Court. It is not as if the exercise of that discretion is final or is not subject to appeal but the appellate Court ordinarily should be loath to interfere with that discretion. In this case, apart from the question of discretion, we have considered the matter on merits and in our opinion, with very great respect to the learned Judge, there was no cause established for interference with the discretion exercised by the Registrar in favour of the appellants.
14. The result is that the appeal must succeed. The order of the learned Judge will be set aside and the order of the Registrar restored.
15. It is unnecessary to consider the aspect of the case from the point of view whether it falls under Section 11 or not as Mr. Bhabha wanted to argue.
16. The respondents to pay the costs of the appeal and the costs of the proceedings before the learned Judge below. In taxing the costs of the proceedings before the learned Judge the Taxing Master will use his discretion to allow any sum for instructions exceeding Rs. 2,000 as he may think proper.
17. Liberty to the appellants to withdraw the sum of Rs. 500 deposited in Court.