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1970 Supreme(Bom) 90
Bombay High Court
VIMADALAL
In the matter of M/s.R.T.Engineering and Electronics - Appellant
Versus
. - Respondent
Decided On : 07/23/1970
J. I. Mehta with Shavksha, for Petitioners instructed by M/s. Daruvala and Co.; K. S. Cooper, for Registrar of Trade Marks.
The distinction between Sections 11(a) and 12(1) of the Trade and Merchandise Marks Act, 1958 and the factors to be considered in determining whether marks are "deceptively similar" within the terms of Section 12(1).
Headnote:
TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTION 11(A) AND 12(1) - DISTINCTION - APPLICABILITY - SCOPE - CONFUSION OR DECEPTION - FACTORS TO BE CONSIDERED.
Fact of the Case:
The Petitioners applied for the registration of their trade mark for diesel oil engines (not for land vehicles) for sale in the State of Gujarat. The Assistant Registrar refused the application on the ground that the mark was deceptively similar to registered trade mark No.213586-B and the mark in application No.253773-B.
Finding of the Court:
The Court held that the Assistant Registrar was right in holding that, visually and phonetically, the applicant's mark and the registered trade mark No.213586B were not similar. The Court also held that the Assistant Registrar was right in holding that the petitioner's case did not come within the ambit of S. 12(3) of the Act. However, the Court held that the Assistant Registrar was wrong in holding that there was likelihood of contextual confusion or confusion as to trade provenance in respect of the goods to which the applicant's mark related and the goods to which registered trade mark No.213586B related.
Issues: 1. Whether the Assistant Registrar was right in refusing the Petitioners' application for registration of their trade mark under Section 12(1) of the Act? 2. Whether the Assistant Registrar was right in holding that there was likelihood of contextual confusion or confusion as to trade provenance in respect of the goods to which the applicant's mark related and the goods to which registered trade mark No.213586B related?
Ratio Decidendi: 1. The Court held that the Assistant Registrar was wrong in applying Section 12(1) of the Act to the mark in Application No.253773B which was not yet registered. The Court held that Section 12 can come into play only when the competing mark is a registered trade mark. 2. The Court held that the Assistant Registrar had completely disregarded the nature of the goods and the kind of customers who would buy them in comparing the marks in question for the purpose of determining whether they were "deceptively similar" within the terms of Sec.12(1).
Final Decision: The Court allowed the appeal and set aside the decision of the Assistant Registrar. The Court directed the Assistant Registrar to accept the Petitioners' application for registration of their mark and advertise the same and proceed in accordance with law.
2. Learned counsel on behalf of the Petitioners contended that in view of the conclusion arrived at by the Registrar that the Petitioners' mark was neither visually nor phonetically similar to registered mark No.213586-B or to the mark in application No.253773-B, it was not open to him to refuse the Petitioners' application summarily under Section 18(4) without advertising the same in accordance with Section 20 of the Act and taking evidence in regard to the likelihood of confusion on other grounds. In order to deal with that contention of the Petitioners, it is necessary to refer to Sections 11(a) and 12(1) of the Act and to compare the scope of those two sections. The relevant portion of Section 11 is in these terms:-
"11. Prohibition of registration of certain marks.-
A Mark:-
(a) The use of which would be likely to deceive or cause confusion; or- shall not be registered as a trade mark."
The relevant portion of Section 12 reads as follows:-
"12. Prohibition of registration of identical or deceptively similar trade marks.- (1) 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 trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods."
The expression "deceptively similar" which is to be found in Section 12(1) is defined in Section 2(1)(d) in the following terms:-
"(d) "deceptively similar":- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;"
In almost all the English authorities in which any question under either of these sections fell to be decided, the scope of Section 11 was considered in relation to Section 12, or vice versa, and these two sections have been dealt with in a comparative way. It may be mentioned that Section 11 of our Act corresponds to Section 11 of the U.K. Trade Marks Act, 1938, and Section 12 of our act corresponds to Section 12(1) and (2) of th
