The overall similarity of trade names, considering their structural and phonetic similarity, the nature of the goods, and the average intelligence and imperfect recollection of consumers, can lead to deception or confusion under Section 10(1) of the Trade Marks Act, 1940. Acquiescence in the use of a similar trade name, evidenced by knowledge of the other party's advertisements and failure to take action before goodwill is built up, can constitute "special circumstances" under Section 10(2) of the Act, allowing for limited registration.

Judgment

S. K DAS, J. : This is an appeal by special leave granted by this Court on December 8, 1958. On July 19,1950, Satya Deo Gupta, respondent before us, made an application under S. 14 of the Trade Marks Act, 1940 (Act V of 1940) (hereinafter referred to as Act) for the registration of the trade name of a biochemical medicinal preparation, commonly known as Lakshmandhara , in Class 5 of the Fourth Schedule to the Trade Marks Rules, 1942. The application was made by the respondent as the sole proprietor of Rup Bilas Company situate at Dhankutti in Kanpur. The averments made in the application were that the said medicinal preparation had been in use by the name of Lakshmandhara since 1923 and was sold throughout the length and breadth of indict as also in some foreign markets; the mark or name Lakshmandhara was said to be distinctive to the article, and it was stated that the approximate annual turnover was Rs. 40,000/- Notice of application was given by the Registrar of Trade Marks, Bombay, and the Amritdhara Pharmacy, a limited liability company and appellant before us, filed an application in opposition. In this application the appellant stated that the word Amritdhara was already registered as trade name for the medicinal preparation of the appellant, and that medicinal preparation was introducted in the market so far back as in the year 1901; on account of its great popularity many people advertised similar medicines with slight varitions of name to pass off their goods as Amritdhara : It was averred that the composite word Lakshmandhara was used to denote the same medicine as Amritdhara and the single word dhara , it was stated was first used in conjuction with Amritdhara to denote the medicine of the appellant and the medicine Lakshmandhara being of the same nature and quality could be easily passed off as Amritdhara to the Ultimate purchaser. The appellant contended that as Amritdhara, was already registered and Lakshmandhara being a similar name was likely to deceive the public, registration should be refused.

2. On behalf of the respondent a counter-affidavit was made in which it was stated that Amritdhara and Lakshmandhara were two distinctly different names and no one could pass of one for the other. It was further stated that during the long period of introduction and sale of Lakshmandhara since 1923, no objection was ever raised from any quarter, from the appellant or anybody, else, to the use of the name Lakshmandhara . It was denied by the respondent that the composite word Lakshmandhara was likely to deceive the public or could by any stretch of imagination be taken or mistaken for Amritdhara. The respondent further alleged that the single word dhara had no particular significance in relation to the medicine, nor did that word mean or convey any special or exclusive meaning or effect in relation to the medicine. It was also stated that apart from the difference in name, the phial, label and packing of Lakshmandhara had exclusive designs of their own and were not likely to be confused with any other medicine of similar nature, least of all with Amritdhara whose packing was distinctly different in colour, design and layout.

3. The Registrar of Trade Marks dealt with the application and the opposition there to by his order dated September 10, 1953. It appears that apart from the affidavits filed, no other evidence was led on behalf or either party, but certified copies of certain decisions in earlier cases (to which the respondent was not, however, a party) given in favour of the appellant in support of its claim of infringement of its registered trade mark Amritdhara were filed. A list of such cases has been printed as annexure A . These cases showed that a number of medicines with the word Amrit or dhara as part of their names had been introduced in the market since 1947, and the appellant successfully took action against them for infringement of its trade mark. Even