This is a Letter Patent Appeal by K.R. Chinnikrishna Chettiar from the judgment of Jagadesan, J., in C.M.A. No. 266 of 1961 ; we might very briefly state that the appeal before the learned Judge was by Sri Ambal & Co., Madras (here the respondent) from the order of the Assistant Registrar of Trade marks, dismissing the opposition of Sri Ambal & Co., to the application of the present appellant for registration of a trade mark submitted by him. The second respondent before the learned Judge was the Assistant Registrar of Trade Marks, Madras. In an elaborate judgment, in which the facts are extensively set forth and several authorities cited and discussed, the learned Judge allowed the appeal and set aside the order of the Assistant Registrar registering the trade mark submitted by the appellant before us.

A considerable area of the controversy can now be segregated from the scope of the discussion. For instance, the learned Judge has described both the pre-existing mark or design of the respondent (Sri Ambal & Co.), as well as the mark of the appellant. The respondent company had actually two register entries, No. 126808 consisting of “ a label having the device of Goddess with a trident perched on a globe floating on water in a circular frame” . The top of this label bore the legend “ Sri Ambal Parimala Snuff”. The other entry No. 146291 was not a visual design, but consisted of the expression “ Sri Ambal” . The present appellant’s mark is thus described. It is a “ label of three panels” or divisions ; the mid or central panel contains the picture of Goddess alleged to be that of Sri Andal, and the legend ‘Sri Andal ‘. The top and bottom panels contain the words “ Sri Andal Madras Snuff” in Tamil, Devanagiri, Telugu and Kannada script and character. It is now not within the scope of controversy that there is any deceptive resemblance between. the two lables, or that, from the point of view of the visual test, the mark of the appellant sought to be registered offends the canons of trade mark registration by any affinity of line or forms, or the totality of a semblance. This was the finding of the Registrar himself, and it is the finding of the learned Judge in unequivocal terms. The learned Counsel for the respondent (Sri Thyagarajan) does not seek to contend that, in this respect, the learned judge has overlooked any element of design which was likely to confuse, or that his broad conclusion is erroneous.

Consequently, it may be taken as established that the true controversy is between the registered mark of the respondent “ Sri Ambal” and the mark of the Appellant sought to be registered, which is not an expression but a visual design,, but which incorporates “Sri Ambal” as an integral part thereof. In other words though the case-law upon this entire subject is not merely extensive and prolific, but almost bewildering in the multiplicity of instances that have come up for consideration before Courts, the decisions that closely impinge upon the issue adumbrated before us are not very many. The issue may be expressed in the following form Where the controversy arising from an action for infringement, that is, in the form of appeal against the registration is essentially between a pre-existing trade mark consisting of an expression, which has acquired significance by close association with the goods of the proprietor of the mark, and a visual design which incorporates another expression as a part thereof, what are the principles upon which the matter should be determined? When the two expressions are not identical, but phonetically both similar and dissimilar can the party seeking registration contend that the dissimilarities should be given weight, particularly because the supposed offending expression is not sought to be registered by itself, but as some part of a visual design which in no way bears a deceptive resemblance to the visual design of the proprietor opposing registration? Is it a defence that the g