A trade mark shall not be registered if it is identical with or so nearly resembles a trade mark already on the register as to be likely to deceive or cause confusion.

Headnote:
TRADE MARK - CIBA - SECTION 10(1) - Registration of trade mark resembling an existing trade mark - Likelihood of deception - Discretionary relief under Section 46 - Delay in filing application for rectification.
Fact of the Case:

The appellants, a Swiss company, applied for registration of their trade marks Ciba, Ciba (monogram), Cibalgin, Ciba-zol and Cibalbumin. The respondents applied for registration of a label containing the word Cibol. The Registrar ordered rectification by removal of the respondents' trade mark. On appeal, the High Court reversed the Registrar's decision.
Finding of the Court:

The Court held that the trade mark Cibol so closely resembled the appellants' trade mark Ciba that there was a likelihood of deception. The Court also held that the respondents had not established any cause for interference with the Registrar's discretion in favour of the appellants.
Issues: Whether the trade mark Cibol so closely resembled the appellants' trade mark Ciba that there was a likelihood of deception.
Ratio Decidendi: The Court held that the trade mark Cibol so closely resembled the appellants' trade mark Ciba that there was a likelihood of deception. The Court considered the visual and phonetic resemblance between the two words and found that there was a marked and close resemblance. The Court also considered the evidence of user of the respondents' goods and found that it was irrelevant to the issue of resemblance.
Final Decision: The Court allowed the appeal and set aside the order of the High Court. The Court restored the order of the Registrar and ordered the respondents to pay the costs of the appeal and the costs of the proceedings before the High Court.

Judgment - Chagla, C.J.

1. This is a trade mark appeal and it came to be filed under the following circumstances. The appellants, who are a Swiss company, applied to the Registrar of Trade Marks on the 2nd July 1942 for registration of their trade marks Ciba, Ciba (monogram), Cibalgin, Ciba-zol and Cibalbumin. These marks are used in connection with pharmaceutical preparations. The mark Ciba was registered on 24-8-1946, the mark Ciba (monogram) was registered on 27-10-1944, the mark Cibalgin was registered on 16-3-1944, the mark Cibazol was registered on 27-7-1944 and the mark Cibalbumin was registered on 16-3-1944. On the 22nd December 1943 an application was made by the respondents for registration of a label which contained the word Cibol. This application was No. 90423. On the 2nd February 1945 they made two other applications Nos. 105450 and 105451 for registration of design and colour of the same name. The Cibol label was advertised on the 1st November 1947. This trade mark was amended so as to be only the word Cibol and the amended trade mark was advertised on the 1st January 1949. On the 3rd November 1949 Cibol was registered by the Registrar of Trade Marks. On the 16th March 1950 the appellants applied for rectification of the registration. On the 26th March 1954 the Registrar ordered the rectification by removal of the respondents trade mark. An appeal was preferred by the respondents to Mr. Justice Coyajee and Mr. Justice Coyajee reversed the decision of the Registrar, and the appellants have come in appeal.

2. The application of the appellants is under Section 46 of the Trade Marks Act, 1940, and Sub-section (1) of that section provides:

"On application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, the tribunal may make such-order as it may think fit for canceling or varying the registration of a trade mark on the ground of any contravention of, or failure to-observe a condition entered on the register in relation thereto."

And Sub-section (2) provides:

"Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit."

The contention of the appellants is that the entry was made by the Registrar in favour of the respondents in contravention of Section 10(1) of the Act and therefore the entry should be removed from the register. Section 10(1) provides:

"Save as prescribed in Sub-section (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods of description of goods, or which so nearly resembles such trade mark as to be likely to deceive or cause confusion." Broadly, the case of the appellants is that the trade mark "Cibol" so closely resembles their trade mark Ciba and that their trade mark Ciba was already on the register on the 24th August 1946 and therefore the trade mark of the respondents should not have been registered on the 3rd November 1949. The appellants had also sought to bring their case under Section 8, but as we were satisfied that the case clearly fell within the ambit of Section 10(1) we did not permit Mr. Bhabha to elaborate his arguments with regard to his clients case under Section 8.

3. Now, in considering both Section 46 and Section 10 it has got to be remembered that the primary duty of the Court is towards the public and the maintenance of the purity of the register. When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contes

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