The court emphasized the importance of considering the marks as a whole, the nature of the goods, and the surrounding circumstances in determining likelihood of confusion or deception, and highlighted the significance of the prefix 'ACTI' in the pharmaceutical trade.

Headnote:
Trade Mark - Medicinal Pharmaceutical Preparations - Trade and Merchandise Marks Act - Sections 9, 11, 12(1), 18(1)
Fact of the Case:

The petitioners opposed the registration of the trade mark 'ACTICEPH' for medicinal pharmaceutical preparations, citing conflict with their registered mark 'ACTIFED'. The second respondent rejected the opposition, leading to the present petition.
Finding of the Court:

The court analyzed the principles of comparison of word marks, considering look, sound, nature of customers, and surrounding circumstances. It found that the rival marks were dissimilar phonetically and visually, and that the goods' nature and distribution restrictions diminished the likelihood of confusion or deception.
Issues: The issues revolved around the similarity of the marks, likelihood of confusion or deception, and the significance of the prefix 'ACTI' in the pharmaceutical trade.
Ratio Decidendi: The court emphasized the importance of considering the marks as a whole, the nature of the goods, and the surrounding circumstances in determining likelihood of confusion or deception. It also highlighted the significance of the prefix 'ACTI' in the pharmaceutical trade.
Final Decision: The court dismissed the petition, upholding the rejection of the opposition to the registration of the 'ACTICEPH' mark.

JUDGMENT F.I. REBELLO, J.:---By the present petition, the petitioners impugn the order of the second respondent dated 5-8-1992. By the said order, the second respondent has rejected the notice of opposition filed by the petitioners opposing registration of the trade mark “ACTICEPH” as applied for by the respondent in Class 5 in respect of Medicinal Pharmaceutical preparations included in Class 5. The mark on the date of the application was proposed to be used.

Few dates and events may be set out for the purpose of effectively deciding the issues that arise in this petition. On 12-4-1961 M/s. Welcome Foundation Ltd. filed an application for registration of trade mark “ACTIFED” for restricted specification of goods: A medicinal preparation for the treatment of allergies, common cold and confession of the respiratory track. On 16-4-1961 the trade mark “ACTIFED' was advertised in the Trade Marks Journal No. 283 dated 16-4-1961 at page 2833, as proposed to be used. It was granted registration. The petitioner's are the subsequent registered proprietors on assignment of the mark in their favour and notified in Journal No. 723. The mark is renewed and subsisting. On 26-11-1986, respondent No. 1 herein filed an application for registration of their trade mark “ACTICEPH”. On 13-12-1988 the Registrar of trade marks issued examination report in respect of respondent No. 1's ACTICEPH mark setting out therein that no mark (whether registered or pending) was cited as conflicting with the trade mark ACTICEPH. The second respondent raised no objection whatsoever. Accordingly on 16-2-1989, mark ACTICEPH of respondent No. 1 was advertised as accepted in Trade Marks Journal No. 953 dated 16-2-1989 at page 1286. On 8/13-6-1989, notice of opposition No. BOM. 7553 was filed by the petitioners. In opposition the grounds raised were under sections 9, 11, 12(1) and 18(1) of the Trade and Merchandise Marks Act. Respondent No. 1 filed counter statement on 29-12-1989. They set out therein that not trade mark whatsoever was cited by the Registrar as conflicting with respondent No. 1's trade mark ACTICEPH. No objection was also raised by respondent No. 2 to registration. “ACTIFED” i.e. petitioner's mark is registered for restricted specification of goods. ACTI is common to the pharmaceutical trade. There were numerous trade marks registered in India having the common prefix “ACT” and “ACTI”. While comparing rival marks much more regard should be paid to the suffix of the mark namely “CEPH” and “FED” than to the prefix “ACTI” which is common to the trade. It was further contended that there was no likelihood of confusion.

2. The petitioners in support of their opposition filed affidavit of Mr. D.C. Tanna. Some correspondence was exchanged between the attorneys for the respondent No. 1 and petitioner's attorneys. On behalf of the respondent No. 1 Mr. Egon E. Berg, Assistant Secretary of respondent No. 1 filed affidavit in support of their application. With the affidavit, examination report was annexed as Exhibit A and Exhibit B1 were the list of registered (17+1) and pending trade marks (20) in India having common prefix “Act” “ACTI”. Exhibit C is the list of trade marks from Indian Pharmaceutical Guide 1990 edition having prefix “ACT/ACTI” which are actually being sold in the market (19 in number). Exhibit D-1 and D-2 is the International Index of Pharmaceutical Trade Marks (1989/90 13th Edition) published by I.M.S. which contains nearly 280 trade marks with the common prefix “ACTI” as registered in various countries of the world. To the said affidavit, Mr. Tanna on behalf of the petitioners has filed his affidavit in rejoinder on 29-6-1991. On 20-9-1991 respondent No. 1 filed an application in Form TM-16 in the Trade Marks Registry to amend the specification of goods in respect of the trade marks “ACTICEPH” to read as follows:

“An antibiotic medicinal preparation in Class-5 containing cephalosporins to be dispensed on the written prescription of regis

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