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Tarachand Manohar Lal Vs. Deputy Registrar, Trade and Merchandise - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberFirst Appeal No. 131D of 1962
Judge
Reported in1979RLR526
ActsTrade and Merchandise Marks Act, 1958 - Sections 2A
AppellantTarachand Manohar Lal
RespondentDeputy Registrar, Trade and Merchandise
Advocates: G.S. Vohra,; M.S. Vohra and; Anoop Singh, Advs
Cases ReferredIn Gora Products Refining Co. v. Shangrila Food Products Ltd
Excerpt:
.....have been adopted by jamal ahmad the predecessor-in-interest of the appellants the reputation of levers 'mark was well established and consequently the adoption and the use of the impugned mark was in contravention of the provisions of s. shangrila food products ltd, [1960]1scr968 precisely this question arose in connection with the registration of the mark gluvita of shangrila pood products ltd. there is no reason why the test of trade connection between these goods, though they are different, should not apply when the competing mark will suggest that hindustan levers are the manufacturers of the hair removing preparation as well, by applying the second test of trade connection as laid down by the supreme court i have come to the conclusion that the deputy registrar was quite right in..........to the use of the word 'dalda'. hindustan levers ltd. are the owners and the users of the trade mark dalda in respect of hydrogenated vegetable product of vanaspati since the year 1926. (3) this word dalda was invented prior to 1926 by m/s n.v.h. hargos fabriken of holland and was used as a trade mark for edible oils and fats. this dutch firm assigned the mark to hindustan holland vanaspati trading co. ltd. by a deed of assignment in august, 1932. the hindustan holland vanaspati trading co. in their turn assigned the mark to hindustan vanaspati . by a deed dated 27th january, 1938. the present hindustan levers ltd. are the successors of hindustan vanaspati . they are the registered proprietors of the trade mark dalda. this mark was registered in 1947. (4) on 27th september, 1954 the.....
Judgment:

Avadh Behari, J.

(1) This appeal lias taken interminable time. Though preferred in 1962 it could not be heard (ill today either for one reason or another.

(2) The dispute between the parties relates to the use of the word 'DALDA'. Hindustan Levers Ltd. are the owners and the users of the trade mark Dalda in respect of hydrogenated vegetable product of Vanaspati since the year 1926.

(3) This word Dalda was invented prior to 1926 by M/s N.V.H. Hargos Fabriken of Holland and was used as a trade mark for edible oils and fats. This Dutch firm assigned the mark to Hindustan Holland Vanaspati Trading Co. Ltd. by a deed of assignment in August, 1932. The Hindustan Holland Vanaspati Trading Co. in their turn assigned the mark to Hindustan Vanaspati . by a deed dated 27th January, 1938. The present Hindustan Levers Ltd. are the successors of Hindustan Vanaspati . They are the registered proprietors of the trade mark DALDA. This mark was registered in 1947.

(4) On 27th September, 1954 the appel lants Tarachand and Manohar Lal made an application for registration of a trade mark of class Iii in respect of their hair removing preparation called Dalda and Dalda BALSAFA. They claimed that their product is a hair removing soap. They carried on business under the name and style of Plaza Chemical Co. On 22nd June, 1955, the respondent Hindustan Levers Ltd. ('Levers') lodged a notice of opposition to the registration of the application. Levers claimed that registration should be refused as they themselves were the owners and users of the trade mark Dalda and that a confusion was likely to arise in the mind of the public that they were the makers and manufacturers of this hair removing preparation.

(5) In answer to t(his opposition the appellants said that the mark Dalda was first adopted in 1945 by one Jamal Ahmad who carried on business under the name and style of Plaza Chemical Co. He sold the said concern and the present appellants are the assignees of the rights in the business and that mark. This assignment, it is said, was made in favor of the appellants sometimes in 1952.

(6) Levers advanced several grounds of objection to the appellants' mark. These objections were heard by the Deputy Registrar of Trade Marks at New Delhi. By his order dated 30th July, 1962, he disallowed the application for registration as in his view it offended against the provisions of S. 11 of the Trade Marks and Merchandise Marks Act 1958 (the Act). In para 7 findings of Deputy Registrar are given).

(7) It is not necessary to decide all the points which were raised before the Deputy Registrar except the last one (deceptively Similar) for the disposal of this appeal. From his judgment it appears that the last ground was the substantial one on which he declined the application.

(8) As regards S. 11(a) of the Act the Registrar is entitled to refuse the registration if it appears to him that the use of a mark is likely to deceive or cause confusion. On this aspect of the case the Deputy Registrar found:

(A)In hair removing preparations including depilatory soaps vegetable oil is used. There was much in common in the ingredients to be used and in the process of manufacturing depilatory soaps and vegetable oil. (b) That Hindustan Levers themselves were the manufacturers of several well known brands of soaps. (c) That since hydrogenated oil and vegetable oils are used in the manufacture of soaps there was likelihood of confusion as was established by the evidence of the customers of Levers. (d) That in 1945 when the mark is stated to have been adopted by Jamal Ahmad the predecessor-in-interest of the appellants the reputation of Levers 'Mark was well established and consequently the adoption and the use of the impugned mark was in contravention of the provisions of S. 8(a) of the Act, of 1940.

(9) The Deputy Registrar summed up his conclusions in these words:

'ONthe evidence before me and on a review of case law discussed by me 1 have arrived at the conclusions that there is close affinity between hydrogenated vegetable oil or vanaspati (edible) and soaps, that the manufacture of soaps comes within the trade provenance of the Opponents, that the reputation of the Opponents' 'Dalda' mark extends to the soap trade, that there is little or no distinction between the trade in depilatory soaps and the trade in other soaps, and that due to the close similarity between the marks a large number of persons are likely to be deceived to imagine trade connections between the two sets of articles. This conclusion leds me to bold that the application for registration offends against provisions of Section 11(a) of the Act is liable to be rejected.'

(10) The main contention of Mr. Vohra, counsel for the appellants, in this appeal is that the Deputy Registrar was in error in holding that there was any trade connection between the two products vegetable oil of levers and the hair removing preparation of the appellants and thereforee there was not even a remote chance of confusion or deception in the mind of the public if the appellants were allowed to have their work registered in respect of their depilatory soap. I do not agree. In Gora Products Refining Co. v. Shangrila Food Products Ltd, : [1960]1SCR968 precisely this question arose in connection with the registration of the mark Gluvita of Shangrila Pood Products Ltd. In that case Corn Products Refining Co. had been using the registered trade mark Glucovita with reference to their glucose. They opposed the application of Shangrila. It was established that Corn products had required a reputation among the buying public in respect of their product Glucovita. The Supreme Court held that Shangrila's mark could not be registered as the two commodities concerned were not connected as to make confusion or deception likely in view of the similarity of the two trade marks. A. K. Sarkar J. who spoke for the Court said at page 147 :

'ITwas then said that the goods were not of the same description and that thereforee in spite of the similarity of the two marks there would be no risk of confusion or deception. We are unable to accept this contention. It is true that we have to proceed on the basis that the goods are not of the same description for the purposes of S. 10(1) of the Act. But there is evidence that glucose is used in the manufacture of biscuits. That would establish a trade connection between the two commodities, % namely, glucose manufactured by the appellant and the biscuits produced by the respondent. An average purchaser would thereforee be likely to think that the respondent's 'Gluvita biscuits' were made with the appellant's Glucovita' glucose. The absolute identity of the two competing marks of their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesi this latter test applied only when goods are different.'

(11) In my opinion in the facts of the present case the mark Dalda is common to both the products. There is no reason why the test of trade connection between these goods, though they are different, should not apply when the competing mark will suggest that Hindustan Levers are the manufacturers of the hair removing preparation as well, By applying the second test of trade connection as laid down by the Supreme Court I have come to the conclusion that the Deputy Registrar was quite right in holding that there was likelihood of deception or confusion.

(12) Mr. Vohra referred to the observation of Evershed J. in Ferodo Ld's application 62 Rpg 111 where it was held that the same word as 'spitfire' which was in connection with aeroplanes familiar as a household word could be lawfully used as a trade mark in respect of toothpaste. But that is not the case before us here. In the present case there is a close connection between the two kinds of products. It was rightly held by the Deputy Registrar that it is a matter of common knowledge that vegetable oil is used in the preparation of soap and this would be the source of confusion. The buying public will think that Hindustan Levers are the makers of this hair removing soap as they are the makers of various other well known brands.


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