Corn Products Refining Co. v. Shangrila Food Products Ltd.

Desai, J. ll'his appeal was heard by Chagla, C.J., and Shah, J., ef the same High Court. The learned Judges of the appellate bench took the view that there was no evidence that the appellant's mark had acquired any reputation among the public but that the evidence produced showed that it had acquired a reputation among the tradespeople only who were discerning and were not likely to be deceived or confused. According to them, the public not being aware of the reputation of the appellant's trademark were not likely to be deceived or confused by the use by the respondent of its proposed trademark. . They also held that the evidence established that there were a series of marks in which the "prefix or suffix 'Gluco' or 'Vita'

occurred and that it could not therefore be said that the common features 'Gluco' anp· 'Vita' were only associated with the manufacture of the appellant's goods. On bJth these grounds they held that the proposed ma.rk of the respondent was not likely to confuse or deceive any one. In the result, they set a.side the order of Desai, J., and restored that of the Deputy Registrar. The appellant has now appealed to this Court from the judgment of the appellate Judges of the High Court.

As we have earlier stated, the appellant had opposed the registration of the respondent's ma.rk under s. S(a) and also under s. 10(1). In order that s. 10(1) might apply to the case, the appellant had to establish that its mark had been registered in respect of the ·same goods or description of goods for which the respondent

1959 had made its application for registration. On this

question the decisions of the Deputy Registrar and Corn Producls Desai, J., are against the appellant. Before the appellate Refining Co.

v. Judges of the High Court the appellant proceeded on Slzangrila Food the basis that the goods were not of the same descrip-Products Ltd. tion. Before us also the appellant has adopted the same

attitude. That puts s. 10(1) out of the way. We are Sarkar]. thus left only with the question whether s. 8 (a)

prevents the registration of the respondent's mark.

In our judgment the view of the appellate Judges of the High Court that there was no evidence that the appellant's trade mark had acquired a reputation among the public cannot be sustained. In.coming to this view, they relied on the affidavits filed by the appellant wherein it was stated that "Glucovita is a. well-known mark in the trade" and denoted only the products of the appellant. We think that the learned appellate Judges put too strict a meaning on the words "in the trade " in thinking that they referred only to the tradespeople. In our view, these words,may refer also to the public. If they do, then, of course, that would be evidence that the appellant's mark had acquired a reputation among the public.

But apart from this, there is other evidence on the record to support the conclusion that the appellant's mark had acquired a reputation among the public. The appellant had in its opposition categorically stated that its mark had acquired a reputation among the Indian buying public. There is no clear denial of'this in the counter-statement filed by the respondent. There is further ample evidence to show that the appellant's goods under its mark 'Glucovita ' were sold in very large quantities in small containers of one pound and four ounces capacities. The small sizes of the con-tainers would indicate that the goods were sold to the public for if those sales had been to tradespeople for industrial purposes, they would have been made in bulk or in much larger containers. It appears that the appellant spent considerable sums for the advertise-merit of its .mark ' Glucovita ' in ordinary popular journals and this would indicate that it had a large $ale for its goods among the general public. But the most conclusive evidence of the sale of the appellant's 1959 goods under the mark 'Glucovita' to the general public comes from the affidavits filed by the respondent itself. Corn Prodw;ls Refining Co. From the affidavit of K. M. Jamal, a P.artner in a firm v. of Pa.war and Co., filed by the respondent, it appears Shangrila Food that" a number of customers come-to buy the products Prodiws Ltd. 'Gluvita' and the products 'Glucovita '." ~imilar statements appear in eight other such affidavits. The Sarkar]. evidence provided by these affi<la vita make it perfectly clear that the appellant's mark had acquired a reput-ation among the general buying public. We think it right in this connection also to refer to the respondent's grounds of appeal against the judgment of Desai, J.

In these the respondent does not dispute, and in fact it assumes, that the appellant's mark had acquired a reputation among the public. We are, therefore, fully satisfied that the appellant has established that its mark has acquired a reputation among the buying public.

In connection with the question of reputation, the learned appellate Judges seem to have fallen into another curious error. They saicl "A commodity may acquire reputation by its being ma.de by a particular manufacturer and the consumers may require not a particular commodity but the commodity ma.de by a · particular manufacturer. It is only in the latter case that it could be said that the com:r;riodity manufac-tured by. a particular manufacturer has acquired a reputation among the public. On those affidavits there is not even a suggestion that the public wanted the 'Glucovita' powder mixed with vitamins manufac-tured by the respondent and not by anybody else."

The respondent referred to by the learned JuJges is the appellant ;before us. We are unable to agree with the view expressed by them. It Reems clear to us that what is necessary is that the reputation should attach to the trade mark; it should appear that the public associated that trade mark with certain goods. The reputation with which we are concerned in the present case is the reputation of the trade mark and not that of the maker of the goods bearing that trade mark. A trade mark may acquire a reputation in connection

974 SUPREME OOUHT REPORTS [1960(1)]

1959 with the goods in respect of which it is used though

a buyer may not know who the manufacturer of the Corn Products goods is.

Rtfining Co, In our view, therefore, it would be wrong in this

v.

Shangrila Food case to say that the appellant's trade mark had not Products Ltd. acquired any reputation among the general public and

that hence there is no reasonable apprehension of their Sarkar f, being confused or deceived by the use of the respond-

ent's proposed mark.

The second point on which the learned appellate Judges based themselves in arriving at the conclusion that there was no reasonable apprehension of confu-sion or deception was, as we have earlier stated, that there were various trade marks with a prefix or suffix 'Gluco' or 'Vita' and that made it impossible to say that the common features ' Glu ' and 'Vita' were only associated with the appellant's products. This view was founded on a passage which the learned appellate Judges quoted from Kerly on Trademarks, 7th Edn. p. 624. That passage may be summarised thus : Where there are a " series" of marks, registered or unregister-ed, having a common feature or a common syllable, if the marks in the series are owned by different persons, this tends to assist the applicant for a mark containing the common feature. This statement of the law in Kerly's book is based on In re: an application by Beck, Kollar and, Company (England) Limited('). It is clear however from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that those marks had acquired a reputation by user in the market. We will now read a portion of the judg-ment at pp. 82 & 83 in Beck, Kollar &: Go's case(') from which what we have stated earlier, appears:

" I am disposed to agree with Mr. Burrell's sub-mission that the "series" objections is primarily founded upon user, because the inference which the Registrar is asked to draw is that traders and the public have gained such a knowledge of the common element or characteristic of the " series" that when r959 they meet another mark having the same character-istic they will immediately associate the later mark Carn Produets Refining Co. with the "series" of marks with which they are v. already familiar. But I do not think that this Shangrila Food statement necessarily implies that the whole issue Products Lid. must be determined solely under the provisions of sec. 11, as I will now endeavour to explain. Sarkar].

"When an application for re~istration is before the Registrar it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with t.he mark of the application, which mark!\ may stand on the Register in the name of one proprietor only, or in the name of several different proprietors. At this stage, when the matter is one between the applicant and the Registrar, the latter generally has before him no evidence as to whether the registered marks are in actual use or not, but in forming an opinion under Sec. 12 as to whether or not confusion or deception is likely to arise, he is bound, I think, in the absence of evidence to presume that, primafacie some at least of the registrations have been effected bona fide by persons who at the date of their respect-ive applications were using or proposed in the near future to use their marks. If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a "series"

of marks and judge the conflict between the appli-cants' mark and each 6f the proprietor's marks with this consideration in mind. Of course, if the regi-strations merely consisted of one and the same word registered separately in respect of several articles to be found in a single class of the Trade Marks Sche-dules, the Ragistrar would in general regard all these registrations as but the equivalent of a single registration covering all the items, for they would not constitute a ·" series " as now under discussion.

On the other hand, if the registered marks found were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant, who would be in a. position to

I959 submit that the common characteristic was one well

re_cognised in marks in use in the particular trade. Corn Products In short, when the comes to compare the ~egistrar Refining Co. applicant's mark with the registered marks, using

v.

Shangrila Food the principles laid down in the " Pionotist " case Products Ltd. the presence of marks on the Register other than the

one with which the comparison is is being made is Sarkar]. regarded an one of the surrounding circumstances

which he is required f,o take into account.

"But when the same question comes before the Registrar in opposition proceedings, a it appears to me that he is no longer in position to make any presump,tion as rllgards the surrounding circum-stances, but that before he can draw the suggested inference based upon the user of other marks either in the applicant's or the opponent's favour, any such user must be established by evidence (see, e.g. Harrods Ld.'s Application, 52 R.P.C., p. 70, 1. 39-p. 71, 1. 15, where the Registrar refused to draw the necessary inference in favour of the applicants in the proceedings)."

We have no reason to think that Kerly in stating the law on the subject intended to depart from the princi-ple stated in the' passage that we have just now read, from Beck, Kollar & Co's casl).

We may also refer to In re: Harrods' appliwtion (') mentioned in the quotation from Beck, Kollar & Go's case (') set out in the preceding paragraph. It was there said at p. 70, Now it is a well recognise"d. principle, that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those two marks contain a common ele-ment which is also contained in a number of Qther marks in nse in the same market such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly· req,uires that the marks comprising the common element shall be

in fairly extensive use and, as I have mentioned, in I959 use in the market in which the marks under consi-deration are being or will be used. Corn Products Hefimng Co. The series of marks containing the common element v. or elements therefore only assist the applicant when Shangrila Food those marks are in extensive use in the market. Products Ltd. The onus of proving such user is of course on J. the applicant, who wants to rely on those marks. Sarkar Now in the present case the n.pplicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either ' Gluco ' or 'Vita ' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permis-sible to draw any inference as to their user from the presence of the marks on the register. If any autho-rity on this question is considered necessary, reference may lie made to Kerly p. 507 and WWesden Varnish Go. Ltd. v. Young & Marten Ltd. (1). It also appears that the appellant itself stated in one of the affidavits used on its behalf that there were biscuits in the market bearing the marks 'Glucose Biscuits ', ' Gluco biscuits' and 'Glucoa Lactine biscuits '. But these marks do not help the respondent in the present case.

They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in decid-ing in favour of the respondent basing themselves on the series marks, having' Gluco' or 'Vita' as a prefix or a suffix.

We have already said that in our view the mark 'Glucovita' has acquired a reputation among the general buying public. The first question that then arises is whether the marks ' Glucovita' and 'Gluvita '

are so similar as to be likely to cause confusion to the'

buying public or deceive them. On this matter, we have not the advantage of the view of the learned

I959 appellate Judges of the High Court. They did not

express any view on this aspect of the question at all. Corn Products We are however inclined to think that their answer to Refining Co.

v. the question would have been in the affirmative. Shangrila Food However that may be, the Deputy Registrar felt that Products Ltd. the words were not so similar as to be likely to gi ·rn

rise to confusion or to cause deception. He felt that the Stukar ]. syllable 'co' in the appellant's mark was an em-

phatic characteristic and was not likely to be slurred over. He apparently felt that this syllable would prevent any confusion arising between the two marks or any person being deceived by the use of them both. He thought that the test laid down in what is called the "Ovax" case (In re: an application by Smith Hayden and Go. Ltd. (1) should be appl.ied and that the emphatic characteristic of the second syllable in the mark 'Glucovita' should decide that there was no likelihood of confusion arising. Desai, J., thought that the Deputy f!,egistrar was wrong.

We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to y the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of simil-arity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai, J., that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are identi-cal. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the .one mark from the other.

We also agree with Deasi, J., that the idea of the two marks is the same. The marks convey the ideas of glucose and life giving properties of vitamins. r959 The Aquamatic case (Harry Reynolds v. Laffeaty's Ld.) (1) is a recent case where the test of the commonness of Corn Products the idea between two marks was applied in deciding Refining Co. v. the question of similarity between them. Again, in Shangrila Food deciding the question of similarity between the two Prcducts Ltd. marks we have to approach it from the point of view of a man of average intelligence and of imperfect Sarkar]. recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them.

It was then said that the goods were not of the same description and that therefore in spite of the similarity of the two marks there would be no risk of confusion or deception. We are unable to accept this contention. It is true that we have to proceed on the basis that the goods are not of the same des-cription for the purposes of s. 10 (1) of the Act. But there iE1 evidence that glucose is used in the manu-facture of biscuits. That would establish a trade connection between the two commodities, namely, glucose manufactured by the appellant and the bis-cuits produced by the respondent. An average pur-chaser would therefore be likely to think that the respondent's ' Gluvita biscuits ' were made with the appe!lant's 'Glucovita ' glucose. This was the kind of trade connection between different goods which in the "Black Magic" case (In re: an application by Edward Hack (2)) was taken into consideration in arriv-ing at the conclusion that there was likelihood of confusion or deception. The goods in this case were chocolates and laxatives and it was proved that J.a.xatives were often made with chocolate coatings.

We may also refer to the "Panda" case (In re: an application by Ladislas Jellinek (3)). The goods there concerned were shoes and shoe polishes. It was observed that sh9e polishes being used for shoes, there was trade connection between them and that this might lead to confusion or deception though the goods were different. The application for registration was

(t) 1958 R.P.C. 387. (2) 58 R.P.C. 91.

1959 however refused under that section of the English Act

which corresponds to s. 8 of our Act on the ground Corn Products that the opponents, the manufacturers of shoes, had Rafining Co.

v. not established a reputation for their trademark Shangrila Food among the public.

Products Ltd. It is true that in both the above-mentioned cases

Sarkar J. the two competing trade marks were absolutely identi-

cal which is not the c?se here. But that in our opinion makes no difference. The absolute indentity of the two competing marks or their close resemblance is only one of the tests for determing the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypo-thesi, this latter test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the "Black Magic" and "Panda" cases, where the competing marks were identical. Whether by applying these tests in a particular case the conclusion that there is likdihood of deception or confusion should be arrived at would depend on all the facts of the case.

It is then said that biscuit.s containing glucose are manufactured with liquid glucose whereas the appel-lant's mark only concerns powder glucose. We will assume that only liquid glucose is used in the manu-facture of biscuits with glucose. But there is nothing to show that an average buyer knows with what kind of alucose, biscuits containing glucose are or can be made. That there is trade connection between glucose and biscuits and a likelihood of confusion or decep-tion arising therefrom would appear from the fact stated by th" n,ppellant that it received from a trades-man n,n enquiry for biscuits manufactured by it under its mark 'Glucovita '. The trndesman making the enquiry apparently thought that the manufacturer of 'Glucovita ' glucose was likely to manufacture biscuits with glucose; he did not worry whether biscuits were made with powder or liquid glucose. Then again it is stated in one of the affidavits filed by the appellant that the respondent's director told the 1959 appellant's manager that the respondent had adopted Corn Products the name 'Gluvita' to indicate that in the manu-Re;fining Co. facture of its biscuits glucose was used. Those state-v. ments on behalf of th.e appellant are not denied by Shangrila .Food the respondent. So, a trade connection between glu-Products Ltd. cose and biscuits would appear to be established.

Sarkar]. We are therefore of opinion that the commodities concerned in the present case are so connected as to make confusion or deception likely in view of the similarity of the two trade marks. 'Ve think that_ the decision of Desai, J., was right.

In the result, we set aside the order of the learned appellate Judges of the High Court and restore that of Desai, J. The appeal is accordingly allowed. The appellant will get the costs before the appellate Judges in the High Court and in this Court.

Appeal allowed.

M. NAR.ASIMHACHAR

I959 v.

THE S'rATE OF MYSORE October zz.

(B. P. SINHA, C.J., JAFER IMAM, J. L. KAPUR,

K. N. W ANCHOO and K. C. DAS GUPTA, ,TJ.) State Seri•ice-Servant found guilty of various irregularities on enquiry-Retirement on superannuation-Reduction of pension-Recavery of loss-Legality-Requirement of notice-Mysore Service Regulations, arts. 294, 297, 2I6, 302, Rule 2(ii), Appendix A-Constitution of India, Art. 3n(2).

The appellant was the Manager of a Mysore Government Reserve Foodgrains Depot and was later on appointed Special Revenue Inspector under the Assistant Director of Food Supplies.

He was, however, not allowed to join his new post and an order of suspension was passed against him. Seven charges in respect of various irregularities committed by him were framed against him relating to the period when he held the former post. An enquiry was held and six of them were found proved. A final notice was served on him to show cause why he should not be compulsorily retired and he did so. In the meantime he reached the age of superannuation and the Government passed the follow-ing order against him,-

CIVIL APPELLATE JURISDICTION: ·Civil· Appeal No. 319 of 1955.

Appeal from th'e judgment and order dated Decem;

her 3, 1953, of the Bombay High Court, in Appeal No. 86 of l!J53, arising out of the judgment and order dated October 14, 1953, of the said Court, in l\Iisc. Peti-tion No. 270 of 1953. ·

K. S. Shavaksha, S. N. Andley, J. B. Dadachanji, and Rameshwar Nath, for the appellants.

' Purshottam -Tricumdas, B. K. B. Naidu and I. N.o Shroff, for the respondents.

1959. -October 8. The Judgment of the Court was delivered by

SARKAR J.-This appeal arises out of an application Sarkar fa made under the· Trade Marks Act, 1940, hereinafter called the Act, for registration of a trade mark. The application was made by the respondent and it was opposed by the appellant. - -

The respondent" is a manufacturer of biscuits. · On November 5, 1949, it made the application for regi-stration of the mark • Gluvita ' in respect of the goods specified in class 30, which mark, it appeared later, it !iad not used prior to that date. The Registrar ordered the application to be advertised before accept-ance on the respondent's agreeing to limit the regi-stration to biscuits only which were one of the classes : of goods specified in class 30.

I959 The appellant is a corporation organised under the

faws of the State of New Jersey in the United States. Com Products On August 31, 1942, it had registered the mark Refining Co. ' Gluoovita ' under the Act in class 30 in respect of

v.

Shangrila Food "Dextrose (d-Gluoose powder mixed with vitamins), a Products Ltd. substance used as food or as an ingredient in food ;

glucose for food." On the same date the appellant Sarkar j. had also registered the same trade mark in class 5 in

respect of "Infan~' and invalids' foods."

The appellant opposed the respondent's application contending that it should be refused under ss. S(a) and and 10(1) of the Act to which oppositfon the respond-ent duly filed a counter statement. Both sides filed affidavits in support of their respective oases.

The Deputy Registrar held that s. 10(1) did not a. pply, for biscuits included in class 30 were not goods of the same description as glucose powder mixed with vitamins which was in the same class. He further held that the words ' Gluoovita ' and ' Gluvita ' were not visually or phonetically similar and that there was no reasonable likelihood of any deception being caused by or any confusion a.rising from, the use of the res-pondent's proposed mark. In regard to s. S(a.), he held applying the case of In re: an application by Smith Hayden &: Coy. Ld. (') that the syllable 'co' which was absent in the respondent's proposed mark suffici-ently distinguished the two marks and made it impossible for any one to be -deceived or confused. One of the findings made by the Deputy Registrar was that the appellant had acquired a reputation and good-will for its trade mark ' Glucovita. ' in respect of glucose powder mixed with vitamins.

The appellant then preferred a.n appeal to the High Court a.t Bombay from the order of the Deputy Registrar. That appeal was heard by Desai, J., exercis-ing the original jurisdiction of that Court. It was not seriously pressed before him on behalf of the appellant that the goods were of the same description and he himself also came to the conclusion that·.they were not so. He, therefore, held that the registration could not be refused under s. 10(1) of the Act. Desai, J., a.greed with the Deputy Registrar's finding that the r959 appellant had acquired a reputation among the public for the mark 'Glucovita' in respect of glucose p.owder Corn Products Refining Co. mixed with vitamins. He however disagreed with the v. view of the Deputy Registrar that the respondent's Shangrila Food mark was not likely to cause deception or confusion. Products Ltd. He held that the two marks were sufficiently similar so a.s to be reasonably likely to cause deception and Sarkar]. confusion. He, therefore, set aside the order of the Deputy Registrar and held that the respondent's mark could not be registered in view of s. 8(a).

Now the respondent appealed from the judgment of