Mohideen Et Al.,V. Registrar Of Trade Marks

1955 Present : Basnayake, A.C.J., and Pulle, J.

S. H. M. MOHIDEEN et al., Petitioners, and REGISTRAR
OF TRADE MARKS, Respondent

S. C. 196-D. C. (Inty.) Colombo, 481/Spl.

Trade Marks Ordinance-Section 17-" Calculated to deceive "

When considering whether a trade mark, which is proposed to be registered, so nearly resembles an already registered trade mark as to be " calculated to deceive " within the meaning of section 17 of the Trade Marks Ordinance, a test to apply is not whether if a person is looking at the two trade marks side by side there would be a possibility of confusion, but whether the average person who sees the proposed trade mark in the absence of the registered trade mark would mistake the proposed trade mark for the registered trade mark.

APPEAL from an order of the District Court, Colombo.

H. V. Perera, Q.C., with N. K. Choksy, Q.C., and S. H. Mohamed, for the Petitioner-Appellants.

Mervyn Fernando, Crown Counsel, for the Respondent.

July 13, 1955. BASNAYAKE, A.C.J.-

Shahul Hamid Mohamed Mohideen and Mohamed Assan Kizar, exporters of tea and Ceylon produce, both carrying on business in Colombo under the business name of " Kizar & Co. " (hereinafter referred to as the appellants) applied to the Registrar of Trade Marks for the registration of a trade mark in respect of tea in class 42. The trade mark is depicted in the application and has the words " TWO RAMS " above what appear to be two hornless rams in a gambolling attitude as in the illustration given below :

The appellants appealed under section 10 (3) of the Trade Marks Ordinance from the Registrar's decision to the District Judge. The learned

The registered trade mark as shown in the illustration given below depicts two bearded goats with curved horns standing almost erect on a box or stand with the legend " Marque Deposse ". On the heads of the goats rests a circle with a lotus device with the capital letters " SIT " in the centre.

District Judge upheld the Registrar's decision that the appellants ' trade mark so nearly resembled the registered trade mark as to be calculated to deceive.

Before deciding the question whether the appellants' trade mark so nearly resembles the registered trade mark, it is necessary to decide the meaning of the words " calculated to deceive " in section 17 of the Trade Marks Ordinance. These words are identical with the words in the corresponding provision of the English Trade Marks Act of 1905 and the decisions on that Act afford some guidance in the interpretation of those words in our Act. It has been held in England that the word " calculated " in the context " calculated to deceive " does not imply any intention to deceive and means no more than " likely ". The question then is whether the appellants' trade mark is likely to deceive.

Apart from the two gambolling rams and the words " TWO RAMS " there are no other features in the appellants' trade mark while the registered trade mark has many features which are not to be found in the appellants' trade mark. The registered trade mark has a bold outline within which the two goats are placed. The features of the two goats are entirely different from those of the animals in the appellants' trade mark. The lotus design with the letters " S I T " on the registered trade mark is not to be found in the appellants' trade mark and is a distinctive feature of it. The stand or box on which the goats are standing is peculiar to the registered trade mark and even the attitude of the goats in it is different.

No standard test of what is likely to deceive the purchaser can be laid down. The tests laid down in the decided cases are rarely capable of extension to other cases. In the circumstances of this case we think the test to apply is not whether if a person is looking at the two trade marks side by side there would be a possibility of confusion; but whether the average person wh

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