1. Dispute over the validity of a registered trade mark for medicinal preparations and subsequent claims of infringement and passing off under the Trade Marks Act, 1940. (Para 1 , 2 , 3 , 4 , 5 , 6 )
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1964 Supreme(SC) 261
SUPREME COURT OF INDIA
20th October, 1964.
P.B. GAJENDRAGADKAR, C.J.I., J.C. SHAH AND N. RAJAGOPALA AYYANGAR, JJ.
Kaviraj Pandit Durga Dutt Sharma, (In both the Appeals) Appellant
Versus
Navaratna Pharmaceutical Laboratories (In both the Appeals) Respondent.
Civil Appeals Nos. 522 and 523 of 1962.
Advocates appeared
Mr. C. B. Agarwala Senior Advocate, (Mr. N. K. Anand, Advocate and Mr. J. B. Dadachanji, Advocate of M/s. J. B. Dadachanji and Co., with him), for Appellant (In both the Appeals); Mr. G. S. Pathak, Senior Advocate, (Mr. Sardar Bahadur, Advocate, with him), for Respondent (In both the Appeals) :
Advocates:
C.B.AGARWAL, G.S.PATHAK, J.B.DADACHAN, N.K.ANAND, SARDAR BAHADUR SAHARYA
C.B.AGARWAL, G.S.PATHAK, J.B.DADACHAN, N.K.ANAND, SARDAR BAHADUR SAHARYA
A descriptive mark used before February 25, 1937, is registrable if it has acquired factual distinctiveness. Furthermore, infringement of a registered trade mark is a statutory right based on deceptive similarity of the marks, independent of whether the overall packaging prevents passing off.
Headnote:(A) Trade Marks Act, 1940 - Sections 6, 10, 13, 21 - Registrability of descriptive marks - A trade mark containing words with direct reference to the character or quality of the goods is generally not registrable under Section 6(1)(d) - However, under the proviso to Section 6(3), a mark continuously used prior to February 25, 1937, may be registered if it has acquired factual distinctiveness, even if it is not inherently adapted to distinguish. (Paras 10, 16, 20)
(B) Infringement vs. Passing Off - Action for infringement is a statutory remedy for the violation of the exclusive right to use a registered trade mark under Section 21 - Action for passing off is a common law remedy against deceit - While differences in packing, get-up, and labels may negate a claim for passing off, they are immaterial in an action for infringement if the marks are deceptively similar. (Paras 28, 29)
(C) Deceptive Similarity - To determine infringement, the marks must be compared as a whole - If the essential features of the registered mark are adopted, the use of a deceptively similar mark in the course of trade constitutes infringement, regardless of differences in the physical appearance of the packaging. (Paras 29, 30)
Facts of the case:
A firm registered a trade mark for medicinal preparations, having used a variant of the mark since 1926. Another party used a similar mark for Ayurvedic products. The registered proprietor sought a permanent injunction against the other party for infringement and passing off. The lower courts held that while there was no passing off due to distinct packaging and get-up, the registered mark was valid due to acquired distinctiveness and the other party's mark was deceptively similar.
Findings of Court:
The registered mark was validly registered under the proviso to Section 6(3) of the Act as it had acquired factual distinctiveness through long-term use. The mark used by the other party was found to be deceptively similar to the registered mark.
Issues: Whether a descriptive mark used before February 25, 1937, can be registered based on acquired distinctiveness; and whether the absence of passing off (due to different packaging) precludes a finding of infringement of a registered trade mark.
Ratio Decidendi: The court held that the proviso to Section 6(3) creates an exception for "old marks," allowing registration based on acquired distinctiveness even if the mark is descriptive. It further distinguished infringement from passing off, ruling that infringement depends on the deceptive similarity of the marks themselves, whereas passing off depends on the overall get-up and likelihood of the public being deceived into believing the goods are those of another.
Result: Appeals dismissed.
Legal Category Hierarchy
Table of Contents
2. Whether a descriptive mark is registrable under Section 6(1)(d) and the proviso to Section 6(3), and whether the marks are deceptively similar or constitute passing off. (Para 7 , 10 , 17 , 18 , 26 , 32 )
3. Analysis of acquired distinctiveness for old marks under Section 6 and the legal distinction between statutory infringement of a registered mark and common law passing off. (Para 11 , 12 , 13 , 14 , 15 , 16 , 20 , 21 , 23 , 24 , 28 , 29 )
4. Descriptive marks used before February 25, 1937, are registrable upon proof of acquired distinctiveness; infringement is determined by mark similarity, independent of packaging differences. (Para 20 , 21 , 28 )
5. Appeals dismissed with costs. (Para 33 )
6. Can a trade mark that is descriptive of the goods' character or quality be registered if it was used before February 25, 1937?
Yes, under the proviso to Section 6(3) of the Trade Marks Act, 1940, the Registrar may accept evidence of acquired distinctiveness to register a mark used continuously before that date, even if the mark is not inherently adapted to distinguish. (Para 16 , 20 , 21 )
7. What is the legal distinction between an action for infringement of a registered trade mark and an action for passing off?
Infringement is a statutory remedy for violating the exclusive right to a registered mark, focusing on the deceptive similarity of the marks. Passing off is a common law action for deceit, where differences in packaging and get-up can negate liability. (Para 28 )
8. How should courts treat common or descriptive words when comparing two trade marks for deceptive similarity?
The marks must be compared as a whole. Courts should not disregard parts that are common; the essential features of the entire registered mark are considered to determine if the defendant's mark is deceptively similar. (Para 29 , 30 )
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 appellant from
