Judgment

AYYANGAR, J.: These two appeals, by special leave, are concerned with the validity of the respondent firm s claim as the registered proprietor of a Trade Mark Navaratna Pharmaceutical Laboratories used by it on its medicinal preparations.

2. The two appeals arise out of different proceedings but before narrating their history it would be convenient to briefly set out the facts upon which the claim of the respondent to the exclusive use of this Trade Mark is based. The respondent, as stated already, is a firm, and it carries on business at Ernakulam in the same name and style as the Trade Mark now in controversy - "Navaratna Pharmaceutical Laboratories". As its name indicates, the firm manufactures medicinal products. The business of the firm was founded sometime in 1926 by one Dr. Sarvothama Rao who is now no more. When started, the business was called Navaratna Pharmacy but from January 1945 the name of the business was changed to the present one - Navaratna Pharmaceutical Laboratories. From the very beginning the proprietors used the Trade Mark "Navaratna" on the products which they manufactured and sold. In December, 1928 the word Navaratna and the name Navaratna Pharmacy as connoting the products of the respondent-firm were registered by a declaration of ownership before the Registrar of Assurances, Calcutta. When a legislation substantially similar to the Indian Trade Marks Act, 1940 was enacted in the State of Cochin (Vide the Cochin Trade Marks Act 19 of 1119 (1944)) the respondent-firm registered the word Navaratna as a Trade Mark in respect of its medicinal preparations, on January 31, 1947 and another mark consisting of the words Navaratna Pharmaceutical Laboratories to denote the same products of February 17, 1948. There is evidence that the respondent-firm has been having an expanding business in the products which it manufactures and has been selling the same under the above and other cognate names, and this has continued ever since.

3. The Trade Marks (Amendment) Act, 1946 (Act 12 of 1946) - inserted S. 82-A in the Trade Marks Act of 1940 and under this provision the Central Government was empowered to enter into reciprocal arrangements with Indian States for mutual recognition of Trade Marks registered in the other territory. There was a similar provision in S. 78A of the Cochin Act and availing itself of this provision the respondent-firm applied for the registration of the words Navaratna Pharmaceutical Laboratories in the Trade Marks Registry at Bombay. The application was advertised and no opposition having been entered, the Trade Mark was registered.

4. Pausing here, certain facts have to be set out in relation to the appellant, since they are material for understanding the origin of the proceedings which have given rise to these appeals. The appellant has, for some years past, been carrying on business in the preparation of Ayurvedic pharmaceutical products at Jullundur City in East Punjab under the name of the "Navaratna Kalpa Pharmacy" and had been vending the medicines prepared by him under the name "Navaratna Kalpa". While so, in October, 1946 he applied for the registration of the words "Navaratna Kalpa" as a Trade Mark for his medicinal preparations. These applications was advertised in April, 1950 and the respondent- firm opposed the application for registration on the ground that the word "Navaratna" was descriptive and, having no distinctiveness, could not be registered. This objection prevailed and the registration was refused. This led to the proceedings which have culminated in these appeals.

5. In the first instance, the appellant moved the Registrar of Trade Marks for removing from the register the trade mark "Navaratna" and the word "Navaratna" in the other mark of the respondent. By this date, however, the respondent had filed suit No. 233 of 1951 (from which C. A. No. 522 of 1962 arises) before the District Judge, Anjikaimal for a permanent injunction restraining the app