1959 Supreme(Cal) 95

HIGH COURT OF CALCUTTA
K. C. Das Gupta, H. K. Bose
E. GRIFFITHS HUGHES LTD. - Appellant
Versus
VICK CHEMICAL CO. - Respondent
A. F. O. O.  62  Of  1955
Decided On : MAY 19, 1959

The Deputy Registrar has no jurisdiction to direct registration of a trade mark with amendments made by him suo motu.

Headnote:

TRADEMARK - REGISTRATION - SECTION 6 OF THE TRADE MARKS ACT, 1940 - INTERPRETATION - DISTINGUISHABILITY - ACQUIRED DISTINCTIVENESS - USER - EVIDENCE - AMENDMENT OF TRADE MARK BY REGISTRAR - POWER - SECTION 14 (3) AND SECTION 15 (4) OF THE ACT - SECTION 11 OF THE ACT - DECEPTION OR CONFUSION - SECTION 8 (A) OF THE ACT - SECTION 26 OF THE ACT - BONA FIDE USER.

Fact of the Case:

The appellant, a British Company, applied for registration of a trade mark consisting of the words "karsote Vapour Rub" for a chemical product specified as a vaporising ointment. The respondent, an American Company, also applied for registration of a trade mark consisting of the word "vapo Rub" for goods specified as "pharmaceutical preparations". Both applications were advertised as accepted in the Trade Marks Journal. The appellant and the respondent filed oppositions against each other's application for registration. The Deputy Registrar of Trade Marks directed registration of the respondent's mark with an amendment that instead of the word "vapo Rub" simpliciter, the word "vicks" should be introduced before the word "vapo Rub" and the mark of the Respondent should be registered as "vicks Vapo Rub". With regard to the appellant's application for registration, the direction of the Deputy Registrar is, that the words "vapour Rub" should be deleted from the appellant's mark offered for registration, and only the word "karsote" should be registered as the appellant's mark. Being aggrieved by these directions of the Deputy Registrar, the British Company has preferred this appeal.

Finding of the Court:

The court held that the word "vapo Rub" is not an invented word but a mere misspelling of the ordinary English words Vapour and Rub and as it is a word which has direct reference to the character and quality of goods--a factor, which according to Clause (d) of Sub-section (1) of Section 6, disqualifies a trade mark from being registered under the Act. The court further held that the Deputy Registrar had no jurisdiction to direct registration of the respondent's mark, offered for registration, by introducing the word "vicks" before the word "vapo Rub" and thus amending it suo motu and without an application made by the respondent for the purpose. The court also held that the appellant's proposed trade mark "karsote Vapour Rub" is not distinctive and is not adapted to distinguish their goods. Furthermore the registration of the appellant's trade mark is likely to deceive and cause confusion and as such the registration of it is prohibited by Section 8 (a) of the Act.

Issues: 1. Whether the word "vapo Rub" is an invented word or a distinctive mark within the meaning of Section 6 of the Trade Marks Act, 1940? 2. Whether the Deputy Registrar had jurisdiction to direct registration of the respondent's mark, offered for registration, by introducing the word "vicks" before the word "vapo Rub" and thus amending it suo motu and without an application made by the respondent for the purpose? 3. Whether the appellant's proposed trade mark "karsote Vapour Rub" is distinctive and adapted to distinguish their goods?

Ratio Decidendi: 1. The court held that the word "vapo Rub" is not an invented word but a mere misspelling of the ordinary English words Vapour and Rub and as it is a word which has direct reference to the character and quality of goods--a factor, which according to Clause (d) of Sub-section (1) of Section 6, disqualifies a trade mark from being registered under the Act. The court further held that the Deputy Registrar had no jurisdiction to direct registration of the respondent's mark, offered for registration, by introducing the word "vicks" before the word "vapo Rub" and thus amending it suo motu and without an application made by the respondent for the purpose. The court also held that the appellant's proposed trade mark "karsote Vapour Rub" is not distinctive and is not adapted to distinguish their goods. Furthermore the registration of the appellant's trade mark is likely to deceive and cause confusion and as such the registration of it is prohibited by Section 8 (a) of the Act. 2. The court held that the Deputy Registrar had no jurisdiction to direct registration of the respondent's mark, offered for registration, by introducing the word "vicks" before the word "vapo Rub" and thus amending it suo motu and without an application made by the respondent for the purpose. 3. The court held that the appellant's proposed trade mark "karsote Vapour Rub" is not distinctive and is not adapted to distinguish their goods. Furthermore the registration of the appellant's trade mark is likely to deceive and cause confusion and as such the registration of it is prohibited by Section 8 (a) of the Act.

Final Decision: The appeal was dismissed with modification that instead of the respondent company's amended mark "vicks Vapo Rub" the respondent company's mark "vapo Rub" do proceed to registration.