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HIGH COURT OF CALCUTTA
K. C. Das Gupta, R. S. Bachawat
BENGAL IMMUNITY CO. LTD. - Appellant
Versus
DENVER CHEMICAL MANUFACTURING CO. - Respondent
A. F. O. O. 150 Of 1954
Decided On : MARCH 17, 1959
TRADE MARK - REGISTRATION - SIMILARITY OF MARKS - LIKELIHOOD OF DECEPTION OR CONFUSION - HONEST CONCURRENT USE - SPECIAL CIRCUMSTANCES - DISTINCTIVENESS - SECTIONS 6(1), 8, 10(1), 10(2) OF THE TRADE MARKS ACT, 1940.
Fact of the Case:
The appellant, Bengal Immunity Co. Ltd., applied for the registration of the word "b. I. Phlogiston" as a trade mark for a medicinal preparation. The application was opposed by the Denver Chemical Manufacturing Company, the proprietors of the trade mark "antiphlogistine" for a similar medicinal preparation. The Deputy Registrar of Trade Marks refused the application on the grounds that the mark "b. I. Phlogiston" so nearly resembled the trade mark "antiphlogistine" as to be likely to deceive or cause confusion, and that the mark was not registrable because of the provisions of Section 8 of the Trade Marks Act, 1940.
Finding of the Court:
The court held that the mark "b. I. Phlogiston" so nearly resembled the trade mark "antiphlogistine" as to be likely to deceive or cause confusion. The court also held that the applicant had not acted bona fide in adopting its mark so nearly resembling the opponent's mark of admitted reputation, and therefore there was no honest concurrent user within the meaning of Section 10(2) of the Act. The court further held that the mark "b. I. Phlogiston" was distinctive and satisfied the requirement of Section 6(1) of the Act, but that it offended against the provisions of Section 10(1) of the Act and no case was made out for action under Section 10(2). The court also held that the mark was not registrable because of the provisions of Section 8 of the Act.
Issues: 1. Whether the mark "b. I. Phlogiston" so nearly resembles the trade mark "antiphlogistine" as to be likely to deceive or cause confusion? 2. Whether the applicant had acted bona fide in adopting its mark so nearly resembling the opponent's mark of admitted reputation? 3. Whether the mark "b. I. Phlogiston" is distinctive and satisfies the requirement of Section 6(1) of the Act? 4. Whether the mark "b. I. Phlogiston" offends against the provisions of Section 10(1) of the Act and no case is made out for action under Section 10(2)? 5. Whether the mark "b. I. Phlogiston" is not registrable because of the provisions of Section 8 of the Act?
Ratio Decidendi: 1. In determining whether two marks are so similar as to be likely to deceive or cause confusion, the court must consider all the surrounding circumstances, including the extent of the resemblance, visual or phonetic, the nature of the market of the goods, the character, education and general mental equipment of the persons who are likely to purchase these goods, and all other matters which are relevant. 2. The burden of proving that the resemblance in the marks is not likely to deceive or to cause confusion is on the applicant, and where there is doubt whether there is such likelihood or not, he will not be entitled to registration. 3. The provisions of Section 6 of the Trade Marks Act, 1940 are intended to protect all common words of the language from the monopoly that would result from registration as a trade mark. 4. In order to obtain registration under Section 10(2) of the Act, the applicant must show that there has been honest concurrent use of the marks or that there are other special circumstances which make it proper to permit registration. 5. The mark "b. I. Phlogiston" is distinctive and satisfies the requirement of Section 6(1) of the Act.
Final Decision: The appeal was dismissed with costs.
( 1 ) THIS appeal is against the order of the Deputy Registrar of Trade Marks refusing an application by the appellant, Bengal Immunity Co. Ltd. , for registration or the word "b. I. Phlogiston" in white on a dark background with the name of the appellant, Bengal Immunity Company Ltd. , and its address Calcutta below the same as the trade mark for certain medicinal preparation. As originally made the application was for registration only of the word "b. I. Phlogiston". The Registrar pointed out the objection to registration of this word "b. I. Phlogiston" as the word "b. I. " prefixed to "phlogiston" would indicate the presence of double the chemical element "phlogiston" and would be likely to cause a confusion. Though at first unwilling to make any modification, the applicant ultimately amended his application by putting full stops after 'b' and 'i' and removing the hyphen before 'p' so that the word as it now stands in the application is, as already indicated, "b. I. Phlogiston". To this has been added the same of the applicant company and its address. Mention must also be made of the fact that on being asked whether the applicants were claiming the right to the exclusive use of the word "phlogiston", the applicant made the required disclaimer. The mark was thereafter advertised and an opposition was entered by the Denver Chemical Manufacturing Company, the proprietors of a trade mark "antiphlogistine" for a similar medicinal preparation. The opponents had applied for the registration of this mark "antiphlogistine" on 29-4-1943. That application was allowed and the mark was registered on or about the 1st October, 1947. While the opponents also contended that the mark "b. I. Phlogiston" did not satisfy the requirements of Section 6 (1) of the Trade Marks Act and was therefore, prima facie unregistrable, their main contention was that registration should be refused under the provisions of Section 10 Sub-section 1 of the Trade Marks Act and also under Section 8 of the same Act. Section 10 (1) is in these words:"save as provided in Sub-section (2) no trade mark shall be registered in respect of any goods or description of goods which is identical with the trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion. "sub-section (2) runs thus:"in case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other *** in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. "section 8 provides inter alia:"that no trade mark should be registered which consists or contains any matter the use of which would, by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of Justice. "
( 2 ) THE Deputy Registrar held that the mark sought to be registered by the appellant satisfied the requirement of Section 6 (1) of the Trade Marks Act. But holding that the mark so nearly resembles the trade mark "antiphlogistine" belonging to the opponents as to be likely to deceive or cause confusion and that there was no case made out for permission under Sub-section (2) of S, 10, he held that the mark offended against the provision of Section 10 (1) of the Act. He was also of opinion that the mark was not registrable because of the provisions of Section 8 of the Act. It was on these grounds that he made the order of refusal against which the present appeal has been preferred.
( 3 ) THE first question for decision is whether the Deputy Registrar is in error in thinking that the mark "b. I. Phlogiston" so nearly resembles the mark "antiphlogistine" as
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