Sabyasachi Mukharji, J.
1. This is an appeal from the decision of the Deputy Registrar of Trade Marks dated 24th of Feb., 1975 Whereby the Deputy Registrar has refused the application of the appellant for registration. It appears that on the 24th of March, 1969 the appellant made an application being application No. 255595 to register in Part A of the Register a trade mark consisting of a label containing mainly the devices of four kites in a double-lined circle and the words 'CHAR GUDDI ASLI KEORA JAL' in Devana-gari, Urdu and Bengali characters and 'CHAR GUDDI KEORA WATER' in Roman characters, also the devices of keora flowers on the left and right-hand sides of the label and the name and address of the applicants in Class 3 in respect of a specification of goods which was subsequently amended to read as 'Keora water (perfumery)'. There was objection to the registration of the said mark on the ground that the said claim conflicted with Registered Trade Marks Nos. 163808, 189857 and 189856 under the provisions of Section 12(1) of the Trade and Merchandise Marks Act, 1958. The appellants agreed to amend the mark at the hearing of the application and the application was advertised. On the 20th of Aug., 1973 Md. Abbas Ansari, the respondent No. 3 herein trading as Gazipur Star Chemical Works of Calcutta filed a notice of opposition to the registration of the aforesaid trade mark on the grounds mainly based on the provisions of Sections 11(a) and 12(1) of the said Act. On the 12th of Nov., 1973 the applicants filed their counter statement denying all the allegations made in the notice of opposition. Evidence in support of the opposition consisted of an affidavit by one Abbas Ansari the opponent himself. The evidence in support of the application consisted of an affidavit by a partner of the applicant firm. The evidence in reply consisted of another affidavit by the said partner. The matter was thereafter heard by the Deputy Registrar. Before the hearing there was a request made on the part of the appellant for correction of the application to read that the user has been since Jan., 1968. Originally the statement given in the application was to read as 'proposed to be used.' As the application was advertised in the Trade Marks Journal as proposed to be used and inasmuch as according to the Deputy Registrar the application for amendment was to obviate the objection of the Registry under Section 12(1) of the Act accordingly the prayer for amendment of the period of user was refused by the Deputy Registrar. The appellants were seeking registration of a composite label consisting of the devices of four kites in double-lined circle, the words 'Char Guddi Asli Keora Water' and the devices of Keora flowers and the trading style and the address of the applicants. As mentioned hereinbefore the registration was sought in Class 3 in respect of 'Keora water (perfumery)' and the mark was proposed to be used. There is also no dispute that the opponent being the respondent No. 3 herein was holding registration in respect, of a label mark containing of devices of heart, club, diamond and spade within a circle and also the words 'Tekka Asli Golab Nirjas'. The said registered marks were 189856, 189857 and 163803 all in Class 3 and another being 190671 in Class 5.
2. The Deputy Registrar has refused the appellant's claim both under Section 11(a) and Section 12(1) of the Act. Under Section 11(a) of the Trade and Merchandise Marks Act, 1958 there is the restriction or prohibition of mark the use of which was likely to deceive or cause confusion. Under Section 12(1) of the said Act in respect of the same goods or description of the goods if there is an existing trade mark in favour of another proprietor then any mark which is identical with or deceptively similar to that mark cannot be permitted registration in favour of a different proprietor. Under Section 12(1) of the Act two conditions are necessary to bring an application within the mischief of that section and these are (1) the mark applied for should be either identical or deceptively similar to the existing registered trade mark and (2) that the goods for which registration is ought should be either the same or of the same description as those of the already registered trade mark. In view of the types of the goods namely that the applicant was seeking registration in respect of keora water in Class 3 and the opponent was holding registration in respect of Keora water (perfumery) by the Registered Trade Mark No. 189856 and was also holding registration in respect of Extract of rose (perfumery) by the Trade Mark No. 189857 and Trade Mark No. 163808 and extract of rose for eye diseases by Trade Mark No. 190671, the Deputy Registrar was of the view that though the goods were not identical these could be considered to be goods of the same description. In my opinion the Deputy Registrar was justified in coming to the said conclusion. Therefore, one of the conditions required to be fulfilled for coming within the mischief of Section 12(1) of the said Act was fulfilled. This position was also not seriously disputed before me.
3. The next aspect which requires consideration is the question whether the marks were identical or deceptively similar to each other. In this connection there are certain well settled principles in trade mark laws which may conveniently be reiterated. Very often I find in these matters there is hardly any dispute as to the principles but their application to the particular facts sometimes cause little confusion. Counsel for the appellant stressed before me that in order to consider whether the two marks were Identical or deceptively similar under Section 12(1) or even for the purpose of considering whether the mark was likely to cause confusion or to deceive people it is necessary to consider the persons who are the customers; it is also important to bear in mind the amount of resemblances between the two marks taken as a whole but bearing in mind the essential particulars of each mark. He also emphasised that both the effect on ear and eye should be borne in mind and colour of the different marks is also important. In this connection my attention was drawn to certain passages in Kerly's Law on Trade Marks & Trade Names 10th Ed. where at page 453 the learned editors have emphasised that it is necessary to consider whom the mark must be calculated to deceive. It is, then, necessary to bear in mind what amount of resemblance is likely to deceive or cause confusion and as was observed in one of the leading cases that what degree of resemblance is necessary is from the nature of things incapable of definition a priori. As was emphasised by Mr. Justice Parker in the case of Pianotist Ltd's Appn. (1906) 23 RFC 774 at p. 777 that one must take the two words and one must judge them both by their look and by their sound. One should consider the goods to which they are to be applied and should bear in mind the nature and kind of customers who would be likely to buy the goods. In fact it is necessary to consider the surrounding circumstances and then 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. My attention was drawn to Certain observations appearing at pages 453 of the said book and at page 465 where the learned editors emphasised that the whole picture of each mark has to be considered. Reliance was also placed on the observations appearing at page 468 of the said book where the importance to both ear and eye has been emphasised by the learned editors. Counsel also drew my at ention to the passage at page 470 of the said book to emphasise that colour is also an important element.
4. In the case of K. Krishna Chettiar v. Ambal and Company, : 1SCR290 the Supreme Court emphasised that lack of evidence of actual confusion is not of much significance. The Supreme Court also emphasised that even in a case where there was no visual resemblance between the two marks there might be chance of confusion because ocular comparison is not always the decisive test and Supreme Court emphasised that the resemblances between the two marks must be considered with reference to the ear as well as the eye. In that case the Supreme Court found that there was a close affinity between the sound 'Ambal' and 'Andal'. In the case of Parle Products v. J. P. & Co. Mysore : 3SCR289 the Supreme Court reiterated that in order to come to the conclusion whether one mark was deceptively similar to another the broad and essential features of the two were to be considered. The Supreme Court observed that these should not be placed side by side to find out if there was any difference in the design and if so whether these were of such character as to prevent one design from being mistaken from the other. According to the Supreme Court it would be enough if the impugned mark bore such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. On the aspect of distinctiveness in the case of P. N. Mayor v. Registrar of Trade Marks : AIR1969Cal80 Mr. Justice P. B. Mukharji, as the learned Judge then was, reiterated that the general requirement of the Trade Mark Law was that the mark must be distinctive in the sense that it should be adapted and distinguished and this distinctiveness was fundamental and primarily a matter of fact and such distinctiveness might be either in individual features or in general arrangement. A mark should therefore be considered as a whole on its total impression. It is the totality of the impression visually as well as phonetically that is the true test. If the totality of the impression was likely to cause deception or confusion then the identity is established. In the Division Bench judgment from the aforesaid decision reported in : AIR1972Cal261 though the appeal was allowed on some other point the view expressed by the learned trial Judge on this aspect of the matter was not dissented from. The Division Bench dealt with the aspect of the matter at page 268 in para 22 of the judgment. In the case of in the matter of an application by Ladislas Jellinek for the Registration of a Trade Mark (1945) 63 RFC 59 (70-72) in the decision the learned Judge reiterated that it was necessary to take into consideration the nature of the goods, the type of the customers and furthermore reiterated the following principles:--
'Now taking firstly into consideration the nature of the goods which are now in question, it seems to me that boots and shoes on the one hand differ in their nature at least as widely as the nature of semolina differs from that of mustard; the composition of the two commodities are wholly different and distinct from one another; secondly, it seems to me that the respective uses of the articles have to be taken into account in considering whether they should be regarded as goods of the same description. The mere fact that polish is applied in boots and shoes for the purpose of cleaning them and giving them a smart appearance seems to me to be quite irrelevant in this connection'.
This view was approved by the decision of the Board of Trade reported in 1974 RFC 583.
5. Now, bearing the aofresaid principles in mind I have to examine the decision of the learned Deputy Registrar in this case. The learned Deputy Registrar has compared the two marks in their entirety and has also taken into consideration the fact that though the appellant was describing their trade mark as 'Char Guddi Keora Water' as a matter of fact the device closely resembled the device of playing card; the Deputy Registrar has taken into consideration the entire get up along with the trading style. It is well settled that the onus is on the applicant for registration to prove that the mark applied for is not deceptively similar to any of the registered trade marks. This proposition is beyond dispute and was not disputed before me. The Deputy Registrar bearing the aforesaid principles in mind has also emphasised that onus was heavier when the applicant sought registration of a new mark. According to the Deputy Registrar on the evidence the applicant had failed to discharge that onus and considering the close resemblance of the applicant's mark with that of the opponent's mark and applying the test of imperfect recollection of an average purchaser with the ordinary intelligence the Deputy Registrar came to the conclusion that the provisions of Section 12(1) of the Act constituted a bar to the registration of the appellant's mark. The principles upon which the discretion or the decision of the Deputy Registrar can or should be interfered with by the Court are well settled. Though this Court is exercising appellate and not merely supervisory jurisdiction over the decision of the Deputy Registrar unless the Deputy Registrar has gone wrong in not considering a relevant piece of evidence or in having applied a wrong test the Court would normally be slow to interfere with the discretion or the decision of the Deputy Registrar. This view was reiterated by Lord Dunedin in the case of George Banham & Co. v. F. Reddaway & Co. 1927 AC 406 (413) in the following terms;
'Now, it is true that an appeal lies from the decision of the Registrar, but in my opinion, unless he has gone clearly wrong, his decision ought not to be interfered with. The reason for that is that it seems to me that to settle whether a trade mark is distinctive or not. and that is the criterion laid down by the statute, is a practical question, and a question that can only be settled by considering the whole of the circumstances of the case. I look upon the word 'distinctive' in the Act not as a scientific definition which may be explained and commented on by juges, but rather as the indication of a practical standard to which the registrar is bound to conform. I quote the words used by Lord Shaw in Du Cros' case 'I should describe the duty of the Registrar as this; that examining the particular facts, he has to survey the possible confusions or difficulties which might arise in consequence of the grant of the trademark, or the possible impairment of the rights of innocent traders to do that which, apart from the grant, would be their natural mode of conducting their business'.
And Lord Parker, in the same case, says this: 'The question therefore, is whether the mark itself, if used as a trade mark, is likely to become actually distinctive of the goods of the person so using it. The applicant for registration in effect says : 'I intend to use this mark as a trade-mark, i.e. for the purpose of distinguishing my goods from the goods of other persons', and the registrar or the Court has to determine before the mark be admitted Lo registration whether it is of such a kind that the applicant quite apart from the effects of registration, is likely or unlikely to attain the object he has in view. The applicant's chance of success in this respect must, I think largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some other mark nearly resembling it, upon or in connection with their own goods.'
The fact which influenced the registrar here was the clearly proved use by other traders of lines running the length of the hose. He treated it as I think he should have treated it -- as a practical question. Sargant L. J. says that the marks so used were not trade marks, but the relevancy of them, to my mind, is not that they were trade marks, but that they were marks, and being ordinarily used as such the registrar came to be of the opinion that there would not be distinctive-ness in the mark sought to be registered by the applicant.
My Lords, the cause of my disagreement with the Court of Appeal lies (1) in the fact that they do not look at the question from what I think was the right point of view, i. e. whether the registrar had really gone so wrong as to make it necessary to interfere with his discretion; and (2) in the fact that they considered the matter exclusively from the point of view of whether it could be said that the mark was calculated to deceive, leaving out the further question as explained by Lord Herschell in the passage above quoted.'
Bearing the aforesaid principles in mind I am unable to uphold the objections urged on behalf of the appellant on this aspect of the finding of the Deputy Registrar.
6. The Deputy Registrar has then considered the objection under Section 11(a) of the Act and the Deputy Registrar has noted that rival marks were similar and the goods were identical and also of the same description. The other aspect of the matter was whether the opponent or the respondent No. 3 had established the user prior to the filing of the application for registration of the impugned mark by the appellant. The Deputy Registrar has referred to the affidavit filed on behalf of the respondent No. 3 and has noted that the sale figures could not be disproved by the appellant and from the sale figures the Deputy Registrar came to the conclusion that the opponent's mark had acquired reputation and therefore registration of a deceptively similar mark or a mark which was likely to cause confusion would be contrary to the provisions of Section 11(a) of the Act. In the circumstances, the Deputy Registrar sustained the objection under Section 11(a) of the Act. Applying the principles reiterated by the House of Lords as mentioned hereinbefore and/or the evidence on record I am unable to accept the contention that the Deputy Registrar has proceeded on an erroneous basis on this aspect of the matter.
7. As the mark was only proposed to be used there was no question of application of Section 12(3) of the Act which requires bona fide concurrent user.
8. For the reasons mentioned aforesaid the appeal fails and is accordingly dismissed. In the facts and circumstances of this case, however, I direct that the parties will pay and bear their own costs.