The importance of specific pleadings, overall structural and phonetic similarity in determining deceptive similarity of marks, and the limited scope of interference with the Registrar's orders.

(This appeal is preferred under Section 105 of the Trade and Merchandise Marks Act, 1958 against the order dated 3.2.1998 in T.M.A.No.4 of 1988.)

V. Ramasubramanian, J.

The appellant is aggrieved by the rejection of his application for rectification of the Register, by the Deputy Registrar of Trade Marks and the dismissal of his appeal under section 109 of the Trade and Merchandise Marks Act,1958 by the learned Judge of this court.

2. The facts leading to the above second appeal are as follows:-

(a) The respondent obtained the registration of a trade mark bearing No.302515, in Part-A of the Register, in respect of cosmetic preparations such as Kanmai, Kumkum, Eyebrow pencil and Bindi for sale in the States of Tamilnadu, Kerala, Karnataka, Andhra Pradesh and Orissa and Union Territory of Pondicherry. The mark consisted of the word “IRIS” in Tamil character and the respondent sought registration claiming user from 15-5-1964 and the Registrar registered the mark on 29-1-1975.

(b) On 13-6-1980, the appellant filed an application for rectification, on the ground that they are the registered Proprietors of a Trade Mark known as “Eyetex” bearing registration no.124824 dated 11-9-1946 and that the impugned mark of the respondent offended the provisions of sections 9, 11, 12 and 18 of the Act.

(c) The said application was rejected by the Deputy Registrar, by an order dated 22-3-1988, holding that when the marks are taken as a whole, they are dissimilar and distinguishable.

(d) Against the said order of the Deputy Registrar, the appellant filed an appeal under section 109 of the Act in T.M.A.No.4 of 1988 but the same was also dismissed by the learned Judge of this court by an order dated 3-2-1998. Therefore the appellant has filed the above second appeal.

3. Ms.Gladys Daniel, learned Counsel appearing for the appellant contended-

(a) that the respondent was actually committing a fraud by adopting the word “Eyeris” as an English rendition of his actual registered trade mark in Tamil “IRIS”;

(b) that the device of an eye used along with the English rendition or transliteration of the word “EYERIS” by the respondent, makes it deceptively similar to the registered trade mark of the appellant and also exposes the intention of the respondent to take away the broad and essential features of the appellant’s mark and that therefore the register was liable to be rectified;

(c) that in order to find out whether a mark is identical to or deceptively similar to another mark, the marks should be looked at as a whole and the words cannot be split; and

(d) that the appellant had obtained prohibitory orders against the very same respondent as well as others restraining them from using similar marks and that therefore the dismissal of the application for rectification by the Registrar and the dismissal of the appeal by the learned Judge were erroneous.

4. In support of her contentions, the learned Counsel for the appellant relied upon the decisions of the Apex Court in Amritdhara Pharmacy –vs- Satya Deo Gupta reported in AIR 1963 SC 449, Parle Products (P) Ltd., -vs- J.P.&Co reported in AIR 1972 SC 1359 and Cadila Health Care Ltd., -vs- Cadila Pharmaceuticals Ltd reported in 2001 (1) CTMR 288 (SC). She also relied upon the decisions of this court in Arvind Laboratories –vs- V.Annamalai Chettiyar reported in 1981 (1) MLJ 75, Arvind Laboratories –vs- V.A.Samy Chemical Works reported in AIR 1987 Madras 265 and Jamna Products Manufacturer of Kanmaie -vs- Arvind Laboratories reported in 2003 (27) PTC 409.

5. The first and second contention of the learned counsel for the appellant are that the respondent was actually committing a fraud by adopting the word “Eyeris” as an English rendition of his actual registered trade mark in Tamil “IRIS” and that the device of an eye used along with the English rendition or transliteration of the word “EYERIS” by the respondent, makes it deceptively similar to the registered trade mark of the appellant and also exposes the