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Bombay High Court
LENTIN,SAWANT
Hiralal Parbhudas - Appellant
Versus
Ganesh Trading Company - Respondent
Decided On : 12/06/1983
TRADEMARK - RECTIFICATION OF REGISTER - DECEPTIVE SIMILARITY - ESSENTIAL FEATURES - OVERALL SIMILARITY - CONFUSION - HONEST CONCURRENT USER - DISCRETION OF DEPUTY REGISTRAR - SECTION 56 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958.
Fact of the Case:
The appellants, bidi manufacturers, sought rectification of the register to remove the respondents' deceptively similar trademark. The respondents' label featured a bust of a man and the name "Himatlal" in Devnagri script, while the appellants' labels had a bust of a man and the name "Hiralal" in Devnagri script. The Deputy Registrar rejected the appellants' application, and the single judge dismissed their petition to set aside the order.
Finding of the Court:
The court held that the respondents' label was deceptively similar to the appellants' labels, considering the overall similarity, phonetic similarity, and the likelihood of confusion among average consumers. The court also found evidence of actual deception and confusion caused by the respondents' label.
Issues: 1. Whether the respondents' label was deceptively similar to the appellants' labels. 2. Whether the respondents were entitled to the benefit of honest concurrent user under Section 12(3) of the Trade and Merchandise Marks Act, 1958. 3. Whether the Deputy Registrar's discretion under Section 56 of the Act should be disturbed.
Ratio Decidendi: 1. The court applied well-established principles of trademark law, emphasizing the importance of overall similarity, phonetic similarity, and the likelihood of confusion among average consumers. The court found that the respondents' label, despite some dissimilarities in the bust, was deceptively similar to the appellants' labels, considering the overall get-up and the similarity in the names "Hiralal" and "Himatlal". 2. The court held that the respondents were not entitled to the benefit of honest concurrent user under Section 12(3) of the Act, as their actions were not founded on truth and there was no evidence of genuine concurrent use. 3. The court clarified that the Deputy Registrar did not exercise any discretion in rejecting the appellants' application, as the issue was one of adjudication rather than discretion. The court also found that, even if discretion had been exercised, it would not be appropriate in this case, given the evidence of deception and confusion.
Final Decision: The court allowed the appeal, set aside the judgments and orders of the single judge and the Deputy Registrar, and allowed the appellants' application for rectification of the register. The respondents were ordered to pay the appellants' costs throughout.
LENTIN J.:- This is an appeal from the Judgment and Order of the learned single Judge dismissing the appellants' petition for setting aside the order passed by the Deputy Registrar of Trade Marks rejecting the appellants' application for rectification of the register.
2. The appellants are bidi manufacturers and are the proprietors of four label marks registered in Part A in the Trade Marks Register in April 1943, May 1950, August 1950 and September 1956. For the moment, broadly stated, the appellants' labels comprise of the bust of a man and the name Hiralal in Devagri script over the bust.
3. Respondents 1 and 2 (referred to hereafter as "the respondents") who carry on like business, applied on 7th January, 1970 for registration of their label which for the moment, broadly stated, comprises of the bust of a man and the name Himatlal in Devnagri script over the bust. The application was signed by the 1st respondent's partner Vallabhdas Laljibhai Patel. The respondents' label was registered relating back to 29th January, 1970 in Class A restricted to Gujarat territory. On 7th October, 1970 the respondents applied amendment of their registration application, to wit, that on their label the name "Himatlal" should be read as "Vallabhdas alias Himatlal". On 11th January. 1973 the appellants applied for rectification of the register on the ground that the respondents' label was deceptively similar to the appellants' registered trade mark. That application was rejected by the Deputy Register of Trade Marks. Tre appellants' petition in this Court for setting aside the Deputy Registrar's order was also dismissed by the learned single Judge on the ground that the labels are not deceptively similar with no probability of causing confusion. Hence the present appeal.
4. The main bone of contention between the parties before us is whether the respondents' label is deceptively similar to the appellants' labels. To that end, it would be appropriate to recapitulate some well-established principles. In Kerly's 'Law of Trade Marks and Trade Names' (10th Edition, pages 456457) appears the following passage:-
"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same marks as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details 'of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."
In Re: Sandow Ltd. (1914) 31 RPC 196, it was held that identity of the figure in the centre is immaterial, the overall similarity between the two marks being the touchstone. In James C. and Bros. v. N. S.T. Co., AIR 1951 Bom 147, it was held by the Division Bench that it is important to find out what is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying that trade mark and ascertain if the trade mark whose registration is sought contains the same distinguishing or essential features or conveys the same idea. The question to be asked is what would be the salient feature of the mark whic
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