Judgment

RAMASWAMI, J.- This appeal is brought by certificate from the judgment of the Bombay High Court dated August 17, 1964 in application No. 65 of 1962 upholding in part the judgment of Mr. Justice Tarkunde dated December 7, 1962 in Miscellaneous Petition No. 358 of 1961.

2. The appellant is a limited liability company incorporated under the laws of Switzerland and carries on business in the manufacture and sale of pharmaceutical and chemical products. The respondent is a company incorporated under the Companies Act in India and also carries on business in the manufacture and sale of pharmaceutical products.

3. On December 2, 1946 the appellant applied for registration of its trade mark "PROTOVIT". The application was granted and the appellant s mark was registered in Class V in respect of "Pharmaceutical preparations for human use and for veterinary use, infants and invalids foods." The appellant thereafter used that mark on multi-vitamin preparations in liquid and tablet forms and its goods are being sold under that mark at least since the year 1951.

4. On January 28, 1957 the respondent applied for registration of its mark "DROPOVIT" in respect of "medicinal and pharmaceutical preparations and substances". The application was registered but the advertisement of the respondent s application escaped the notice of the appellant who did not hence oppose the registration. By a letter dated March 4, 1958 Messrs. Voltas Limited, the appellant s agents, drew the attention of the appellant to the respondent s mark "DROPOVIT". There was negotiation between the parties but on March 19, 1958 the respondent wrote to the appellant refusing to alter its trade mark. On January 21, 1959 the appellant applied for rectification of the Register by removal therefrom of the respondent s trade mark. The ground urged in support of the application was that the respondent s mark so nearly resembled the appellant s mark as to be likely to deceive or cause confusion. On March 9, 1960 the appellant applied for amendment of the application and an additional ground was taken that "DROPOVIT" was not an invented word. The application for amendment was allowed by the Registrar. The amended application was opposed by the respondent. By his judgment dated August 5, 1961 the Joint Registrar rejected the application for rectification holding that "DROPOVIT" was not deceptively similar to "PROTOVIT" and that the word "DROPOVIT" considered as a whole was not descriptive. The appellant took the matter in appeal to the Bombay High Court. On December 7, 1962 Mr. Justice Tarkunde dismissed the appeal. The appellant preferred an appeal under Letters Patent but the appeal was dismissed by a Division Bench consisting of Chief Justice Chainani and Mody, J. on August 17, 1964. During the hearing of the appeal the respondent restricted the designation of goods to "medicinal and pharmaceutical preparations and substances containing principally vitamins."

5. The application for rectification was made on January 21, 1959 before the Trade and Merchandise Marks Act, 1958 (Act No. 43 of 1958) came into operation. But it is not disputed that under Section 136 (3) of this Act, the decision of this case is governed by the provisions of Act No. 43 of 1958 (hereinafter called the Act).

6. Section 11 of the Act states :

"A mark -

(a) the use of which would be likely to deceive or cause confusion; or

(b) the use of which would be contrary to any law for the time being in force; or

(c) which comprises or contains scandalous or obscene matter; or

(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or

(e) which would otherwise be disentitled to protection in a court; shall not be registered as a trade mark."

7. Section 12 (1) provides :

"Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a tr