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F. Hoffman La Roche and Company Limited Vs. the Sanitex Chemical Industries Limited - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberO.C.J. Miscellaneous Petition No. 342 of 1961
Judge
Reported in(1965)67BOMLR729
AppellantF. Hoffman La Roche and Company Limited
RespondentThe Sanitex Chemical Industries Limited
Excerpt:
.....12(1) of the act deals with two types of cases. the first type of cases deals with two identical trade marks. if the mark of which registration is sought and the mark which is already registered1 are identical, the registration must be refused. it is not then permissible to proceed to consider whether notwithstanding the circumstances that the marks are identical, the manner of intended user of the mark applied for would justify allowing the registration in respect of some limited class of goods. the second type of cases are those in. which it is necessarily postulated that the two marks under consideration are not identical. here the enquiry is not limited to the comparison of two marks but involves a comparison of the two marks in relation, as regards the existing mark, to the goods..........would be likely to deceive or cause confusion; or(b) ...(c) ...(d) ...shall not be registered as a trade mark.this section is contemplating the consequences of the use of the trade marks.2. section 12(7) provides:-12. (1) save as provided in sub-section (3) no trade mark shall be registered in respect of any goods or description of goods which, is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.the words 'deceptively similar' are denned in section 2(d) as under:-(d) 'deceptively similar':-a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.it is necessary to have in.....
Judgment:

Kantawala, J.

1. [His Lordship after stating the facts and evidence in the case, proceeded.] The sections on which the opposition was based, are Sections 11(a) and 12(1). Section 11(a) provides as follows:-

11. A mark-

(a) the use of which would be likely to deceive or cause confusion; or

(b) ...

(c) ...

(d) ...

shall not be registered as a trade mark.

This section is contemplating the consequences of the use of the trade marks.

2. Section 12(7) provides:-

12. (1) Save as provided in Sub-section (3) no trade mark shall be registered in respect of any goods or description of goods which, is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.

The words 'deceptively similar' are denned in Section 2(d) as under:-

(d) 'Deceptively similar':-A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

It is necessary to have in mind at the outset the scope of the enquiry under each section. For this purpose, one cannot do better than adapt to the present case a passage in the judgment of Evershed J. in the case of In the matter of an application by Smith, Hayden & Coy., Ld. (1945) 03 R.P.C. 97 substituting the marks with which T am concerned in this case for those with which the learned Judge was concerned in the case before him: (a) under Section 11: Having regard to the reputation acquired by the name 'SARIDON', is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons; and (b) under Section 12: Assuming use by the appellants of their mark 'SARIDON' in a normal and fair manner for any of the goods covered by the registration of their mark (and including particularly goods also covered by the proposed registration of the mark 'SANIRON' i.e. pharmaceutical preparation containing iron in ingestible form) is the Court satisfied that there will be no likelihood of deception or confusion among a substantial number of persons if the applicants also use their mark SANIRON normally and fairly in respect of any goods covered by their proposed registration.

3. In the case of each section, the onus is upon the applicant to establish to the satisfaction of the Court that there is no real and tangible danger of confusion. On the other hand, the objections- put forward by the opponents must equally be real and not fanciful. It is not for the Court to consider imaginary and unlikely cases in order to bring Section 12(i) of the Act into operation. Even though the burden is on the applicants, their case is not to be defeated by constructing rather fantastic or far-fetched imaginary cases involving a combination of circumstances which, however possible it may be, has no reasonable probability in any business sense. The Court is not concerned with hypothetical possibilities but with the ordinary practical business probabilities having regard to the circumstances of the case. If at the conclusion of the enquiry, the answer to the question: Is deception or confusion likely to occur? is 'Yes' or if the matter remains in dubio, registration must be refused.

4. It is equally made clear on the authorities as was pointed out by Farwell J. In the matter of an Application by William Bailey (Birmingham) Ld. (1935) 52 R.P.C. 138 that:

The decision of the Registrar or the Assistant Registrar is one which should not, be disturbed at all lightly. Prima facie his decision should stand and, in my view, though this Court might take a different view from that which was taken by the Registrar as to the similarity or dissimilarity of the two marks or the two words, or even if this Court were to take a different view as to the effect of the evidence as a whole from that taken by the Registrar, the Court would hesitate long before reversing the decision of the Registrar on any such grounds as those. In my judgment, before this Court interferes with the decision, of the Registrar in a case of this kind it ought to be satisfied that the Registrar in arriving at his decision has acted upon some wrong principle, e.g., has not approached the problem in the right way, or has taken into consideration matters which he ought not to have taken into consideration or has omitted to take into consideration matters which were proper for consideration. Unless there are some such grounds as those for interfering with the decision of the Registrar, in my judgment that decision ought not to be disturbed.

5. It was argued on behalf of the opponents that the Assistant Registrar did not approach the problem in the right way; that he had taken merely the decisions of the cases reported -and unreported without taking into consideration the facts of those cases and applied them to the present case; that the Assistant Registrar instead of taking into consideration the marks as actually applied for by the opponents, took into consideration the marks as actually used by the opponents, that he misconstrued Section 12(1), that he wrongly applied the provisions of the Drugs Act and the rules made thereunder and that he has, therefore, erred on a matter of principle and in con sequence, I am in a position to consider the matter afresh.

6. In view of this argument, it is necessary to consider the true construction of Section 12(1). Section 12(1) deals with two types of cases. The first type of cases is that no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. There is an absolute bar of registration of two identical trade marks. It requires that the two marks under consideration should be compared. If the two marks under consideration, that is, the mark of which registration is sought and the mark which is already registered are identical, the registration must be refused. It is not then permissible to proceed to consider whether notwithstanding the circumstances that the marks are identical, the manner of intended user of the mark applied for would justify allowing- the registration in respect of some limited class of goods. The second type of cases dealt with by the section are those in which it is necessarily postulated that the two marks under consideration are not identical. Here the enquiry is not limited to the comparison of two marks but involves a comparison of the two marks in relation, as regards the existing mark, to the goods in respect of which the marks are registered and in relation as regards the proposed mark, the goods in respect of which registration is applied for. In the conduct of this enquiry, the surrounding circumstances properly to be taken into account must be considered. When the marks have been considered in relation to the goods, in the light of the surrounding circumstances, the question must be answered: 'Is there likely to be confusion or deception if the application is granted?' When the question is answered, the enquiry under the section is concluded for all purposes and if the answer to the question is either in the affirmative or that the matter remains in dubio, it is incompetent to the tribunal to take into account any further matter in order to consider whether, in the light of those matters, the probability of confusion would be removed and thus the answer already given might be otherwise. See In the Matter of an Application by Bayer Products, Ld. (1947) 64 R.P.C. 123 per Wynn-Parry, J. at p. 131.

7. It is not disputed before me that the goods in respect of which the opponents' mark is registered and the applicants' mark is applied for registration are the same or of the same description. It is also not disputed that the two marks are not identical.

8. It will be noticed that the words used in the section relevant for the purpose are 'deceptively similar', that is, likely to deceive or cause confusion. The Act does not lay down, any criterion for determining what is likely to deceive or cause confusion. Every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the register, if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by the traders in that market. In considering the matter, all the circumstances of the case must be considered.

9. The matters which are to be taken into consideration were stated by Lord Barker (then Parker J.) in In the Matter of an Application by the Pimotist Company Ld. (1906) 23 P.R.C. 774 where he said:.You must take the two words. You must judge of them, both by their look and by their sound. You must consider the foods 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. If, considering all those 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 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.

10. It is necessary to apply each of these considerations in the present ease. So far as visual comparison is concerned, one has to compare the opponents' mark as actually appearing on the register and the applicants' mark as applied for registration. The mark of the opponents as registered is the word 'SARI-DON' per se, while the applicants' mark as applied for registration is not the word mark but is a label mark. The essential feature of the applicants' mark consists of the word 'SANIRON' along with the letters SCI appearing very prominently on a label in a multi coloured background. In view of the statutory restrictions in respect of the labelling of the mark, which I will hereinafter refer to in some detail, the word 'poison' appears in red or against red background. The label of the applicants in a normal and fair user of the mark, must be a multi coloured one and in any visual comparison of the mark, the presence of the letters SCI in bold letters cannot be ignored. In my opinion, visually, the two marks are not similar.

11. It was, however, argued that the essential feature or at least the feature by which the applicants' mark will be asked for is SANIRON. Both the words SANIRON and SARIDON are the words of three syllables and both the words begin with syllable SA and end with the syllable ON. In the middle portion in one case it is NIR and in the other it is RID. In written order the letter 'N' in the word 'SANI' and the letter 'R' in the word 'SARI' especially since both the words are followed by the letter ' I' are likely to be written alike and there is a great chance of confusion. It is true that in the two words 'SARIDON' and 'SANIRON' there are common syllables. But, taken as a whole there is no overall similarity so as to cause confusion. Judging the two words by their sound, the test to be applied in such cases, is the one that is laid down by Luxmoore L.J. In the Matter of an Application by Rysta Ld. (1943) 60 R.P.C. 87 p. 108 and which is approved by the House of Lords in appeal in Aristae, Ld. v. Rysta, Ld. [1945] A.C. 68, Luxmoore L.J. said:-

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, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. 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.

In approaching the question whether the sound of one word resembles too nearly the sound of another, from the point of view of a man of average intelligence and imperfect recollection, it is difficult to find phonetic similarity between the two words SARIDON and SANIRON. Judging the two words by their sound I do not find that there is such a close and. near resemblance between them as is likely to cause confusion.

12. The next thing is to consider the nature and the kind of the customer who would be likely to buy the respective goods and the surrounding circumstances. In the Waiter of am Application by Bayer Products Ld., Lord Green, M.R., emphasised the importance of this consideration in the following words (p. 137) :

The question whether there is likelihood of deception or confusion cannot be considered under Section 12(1), without reference to surrounding circumstances; in other words, the Court is not confined merely to looking at the Register and comparing the two marks as words in the English language or some invented language; it has to consider to what extent, in all the circumstances, deception or confusion is likely.

13. [The rest of the judgment is not material to this report.]


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