Judicial Analysis Court Copy Headnote Facts Arguments Court observation

1959 Supreme(SC) 178

SUPREME COURT OF INDIA
8th October, 1959.
S.K. DAS, J.L. KAPUR AND A.K. SARKAR, JJ.
Corn Products Refining Co., Appellants
Versus
Shangrila Food Products Ltd., Respondents.
Civil Appeal No. 319 of 1955.
Advocates appeared
Mr. K. S. Shavaksha, Advocate, M/s. S. N. Andley, J. B. Dadachanji and Rameshwar Nath, Advocates of Messrs. Rajinder Narain and Co., for Appellants; Mr. Purshottam Tricumdas, Senior Advocate, M/s B. K. B. Naidu and I. N. Shroff, Advocates, with him, for Respondents.

Advocates:
B.K.B.Naidu, I.M.SHROFF, J.B.DADACHAN, K.S.SHAVAKSHA, PURSHOTTAM TRIKAMDAS, RAJINDAR NARAIN, RAMESHWAR NATH ROY, S.N.ANDLEY

The similarity of trademarks and the trade connection between different goods are independent tests for determining the likelihood of deception or confusion.

Headnote:
TRADEMARK - REGISTRATION - OPPOSITION - SIMILARITY OF MARKS - LIKELIHOOD OF CONFUSION OR DECEPTION - TRADE CONNECTION BETWEEN DIFFERENT GOODS - REPUTATION OF TRADEMARK AMONG PUBLIC - SECTION 8(A) OF THE TRADE MARKS ACT, 1940.
Fact of the Case:

The respondent applied for registration of the trademark Gluvita for biscuits, which was opposed by the appellant, the owner of the registered trademark Glucovita for glucose powder mixed with vitamins. The Deputy Registrar held that the marks were not visually or phonetically similar and that there was no reasonable likelihood of any deception or confusion arising from the use of the respondent's proposed mark. On appeal, the High Court held that the marks were sufficiently similar to cause deception and confusion and set aside the order of the Deputy Registrar.
Finding of the Court:

The Supreme Court held that the marks Glucovita and Gluvita were so similar as to be likely to cause confusion to the buying public or deceive them. The Court also held that there was a trade connection between glucose and biscuits and a likelihood of confusion or deception arising therefrom.
Issues: 1. Whether the marks Glucovita and Gluvita were so similar as to be likely to cause confusion to the buying public or deceive them? 2. Whether there was a trade connection between glucose and biscuits and a likelihood of confusion or deception arising therefrom?
Ratio Decidendi: 1. The Court held that the marks Glucovita and Gluvita were so similar as to be likely to cause confusion to the buying public or deceive them based on the following factors: a. The marks were identical except for the syllable co in the appellant's mark, which was not an emphatic characteristic and was not likely to be slurred over. b. The overall structural and phonetic similarity and the similarity of the idea in the two marks was reasonably likely to cause a confusion between them. 2. The Court held that there was a trade connection between glucose and biscuits and a likelihood of confusion or deception arising therefrom based on the following factors: a. Glucose is used in the manufacture of biscuits. b. An average purchaser would therefore be likely to think that the respondent's Gluvita Biscuits were made with the appellant's Glucovita glucose. c. The appellant received an enquiry from a tradesman for biscuits manufactured by it under its mark Glucovita . d. The respondent's director told the appellant's manager that the respondent had adopted the name Gluvita to indicate that in the manufacture of its biscuits glucose was used.
Final Decision: The Supreme Court set aside the order of the High Court and restored the order of the Deputy Registrar, allowing the registration of the respondent's trademark Gluvita .

Judgment

A. K. SARKAR, J. : This appeal arises out of an application made under the Trade Marks Act, 1940, hereinafter called the Act, for registration of a trade mark. The application was made by the respondent and it was opposed by the appellant.

2. The respondent is a manufacturer of biscuits. On November 5, 1949, it made the application for registration of the mark Gluvita in respect of the goods specified in class 30, which mark, it appeared later, it had not used prior to that date. The Registrar ordered the application to be advertised before acceptance on the respondent s agreeing to limit the registration to biscuits only which were one of the classes of goods specified in class 30.

3. The appellant is a corporation organised under the laws of the State of New Jersey in the United States. On August 31, 1942, it had registered the mark Glucovita under the Act in class 30 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 10(1) did not apply, 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 case of In re : an application by Smith Hayden and Coy. Ltd., (1945) 63 RPC 97, that the syllable co which was absent in the respondent s proposed mark sufficiently distinguished the two marks and made it impossible for any one to be deceived or confused. One of the findings made by the Deputy Registrar was that the appellant had acquired a reputation and goodwill for its trade mark Glucovita in respect of glucose powder mixed with vitamins.

6. The appellant then preferred an appeal to the High Court at Bombay from the order of the Deputy Registrar. That appeal was heard by Desai J. exercising the original jurisdiction of that Court. It was not seriously pressed before him on behalf of the appellant that the goods were of the same description and he himself also came to the conclusion that they were not so. He, therefore, held that the registration could not be refused under S. 10(1) of the Act. Desai J. agreed with the Deputy Registrar s finding that the appellant had acquired a reputation among the public for the mark Glucovita in respect of glucose powder mixed with vitamins. He however disagreed with the view of the Deputy Registrar that the respondent s mark was not likely to cause deception or confusion. He held that the two marks were sufficiently similar so as to be reasonably likely to cause deception and confusion. He, therefore, set aside the order of the Deputy Registrar and held that the respondent s mark could not be registered in view of S. 8(a).

7. Now the respondent appealed from the judgment of Desai J. This appeal was heard by Chagla C. J. and Shah J. of the same High Court. The learned Judges of the appellate bench took the view that there was no evidence that the appellant s mark had acquired any reputation among the public but that the evidence produced showed that it had acquired a reputation among the public but that the evidence produced showed that it had acquired a reputation among the trades-people only who were discerning and were not likely to be deceived or confused. According to them, the public not being aware of th

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