AMRITDHARA PHARMACY versus SATYADEO GUPTA

S. K. D.A.s, J.-This is an appeal by special leave granted by · this Court on December 8, 1958. On July 19, 1950, Satya Deo Gupta, respondent before us; made an applioation under s. 14 of the Trade Marks Act, 1940 (Act V of 1940) (h~reinafter referred to as the Act) for registration of the trade name of a biochemioal medicinal preparation, commonly known as 'Lakshmandhara', iri Class 5 of the Fourth Sohedule to the Trade Marks Rules, 1942. The applioation wae made by the respondent as the sole proprietor of Rup Bilu Company situate at Dhankutti in Kanpur. The averments ma.de in the application were that the &&id medicinal preparation had been in use by the name of 'Lakshma.ndhara' since 1923 and was sold throughout the length and breadth of India ae also in some foreign markets; the mark or name 'Lakshmandha.ra' wae said to be distinctive to the article, and it was stated that the approximate B11Dual turnover was Rs. 40,000/-. Notice of the application was given by the Registrar of Trade Marks, Bombay, and the Amritdbara Pharmacy, a limited liability company and appellant before us, filed an application in opposition. In this application the appellant stated that the word 'Amritdhara' was already registered as a trade name for the medicinal preparation · of the appellant, and that medicinal preparation was introduced in the market so far back in the year 1901; on aocount of its great popularity many people advertised similar medicines with alight variations of name to pass off their goodB ae 'Amritdbara'. It was averred that the composite word 'Lakshmandhara' was used to denote the same medicine as 'Amritr dhara'; and the single word "dhara', it was stated, was first used in conjunction with •Amritdhara' to denote tho medicine of the appellant and the medicine 'Lakshmandhara' being of the 88.llle nature and to quality could be easily (>M8ed off' as 'Aniritdhara' to. the ultimate purchaser. The appellant oontended that as • Amritdhara' was already regilr tered and 'Lakahmandhara' being a aimilar name was likely to reoeive the public, registration .ahould be reflll6d.

pp. 485–486

On behalf of the respondent a counter-affidavit was ma.de in which it was stated that 'Amritdhara' and •l.alrahmandhara' were two diatmot.ly different ud no one eould pue off one for the other. It was further stated that during.the long period of introduction and sale of 'Lakshmandhara' since 1923, no objection was ·ever raised from any quarter, from the appellant or anybody else, to the use of the name •Lakshmaudha.ra'. It was denied by the respondent that the composite word 'La.kshmandhara' was likely to deceive the public or could by any stretch of imagination be taken or mistaken for 'Amritdhara'. The respondent further al1ege~ t~fiat the. single :wordt 'dhthara' had~ ~o particu 1a.r s1gm cance m re at10n o · e me 1 1cmc, nor .did that word mean or convey any special or exclusive meaning or effect in relation to the medicine. It. was also stated that apart from the difference in name, the phial, label and packing of 'La.kshmandhara.' had exclusive designs of their own and were not likely to be confused with any other medicine of similar nature, least of all with 'Arnritdhara' whose packing was distinctly r!ifforcnt in colour, design and layout. ·

pp. 486–487

The Registrar of Trade Marks deaU with the application, and th£1 opposition thereto by his order dated September 0, l!l53. It appears that apart from the affidavits filed, no ether evidence was led on behalf of either party; but certified copies of certain decisions in earlier cases (to which the respondent was not, however, a party) given in favour of the appellant in support. of its claim of infringement of its rPgistered trade mark • Amritdhara' were fikd. A list 'of surh cases has been printed as annexure 'A': These cases showed that a number of medicines with the word •Amrit' or 'dhara' as part of their names had bet'n introduced in the market since l!l47; and the appellant successfully took action against them for infringement of its trade mark. ~ven in the Trado Marks Registry the appellant successfully opposed the introduction of names which contained the word •dbara' as pa.rt of the trade name. A question bu.

p. 487

been rallied before us whether the Registrar of Trade Marks was justified in ta.king into considtJre.· tion tl1e decisions in those cases. To that question we aha.II advert later. Tbe Registrar found that in 1901 Pandit Thakur Datta Sharma commenced to do business at Lahore in a particular a.yurvedio medicine which was meant for a.lloviation for of hea.daches, diarrohea, constipatfon and other complaints. This medicine was first sold undor the mark 'Amrit Ki Dhara', but in 1903 the name was changetl to •Amritdhara.', Pandit Thakur Datta Sharma formed limited lia· bility company in 1942 and the name •Amritdhara.' became a well-known popular namo for the medicine. The sale of the medicine went up to about Re. 4 lacs a year. The busine88 waR done in La.bore but when partition came in 1947, the appellant established its business in Debra.dun. Tho Registrar exprcBBed tho view the.t if the matt.er had rested on a. 8 ands. lO(l) ()f the Act, he wo·~ld have no hesi· tation in allowing the opposition antl dismissing the application. This could only moan that the Regist· ra.r was of the view that the name •Lakshmandhara' ao nearly resombled the trade mark 'Amritdhara' tha.t it .wa.s likely to deceive the public or ca.use con· fusion to the trade. Wc are saying this because the High Court through that the Rogistrar did not ex· presij his own opinion whether the nam1i 'Lakshman· dha.ra' was likely to ca.use deception to the public or confusion to the trade. The rcsp(Jnd<'nt, how· ever, relied also on two other circumstances, viz. • (a) honest concurrent Uder o[ the name •Lakshme.n· dhe.ra.' since 1923, and (b) e.cquit•scenco on the part of the a.ppella.nt in the user of the name 'La.kshman· dha.ra.'. The respondent contend~d that these two circumstances brought the ca8c with in the meaning of 'SpC'cial circumstances' in 10(2) of the Act, which permitted the registra.tion by more than one " proprietot- of trade !Qarke which 're identiC!Fol or nearly resemble each other, subject to such oondi· tion and limitations, if any, as the Registrar might think fit to impose. On the point of honest concurrent user the Regi~trar found in favour of the appellant.

pp. 488–489

As to acquiescence he, however, ·found in favour of the respondent and expressed his finding in these words.

p. 489

"In the case before me it is not disputed that t.he applicant commenced his user in a small way in 1923 and it may even be said that up to about 1942 the applicant's u11er was insignificant. In paragraph 12 of the applicant's affidavit dated the 30th March, 1953 he has given details of advertisements in directories, pamphlets, newspapers etc. in which both the applicant's and the opponents' marks were advertised. The facts given in the affidavit go to show that from 1938 right up to the date of the applications by the applicant he has been advertising through mediums which were common to both the applicant and tbe opponents. Here we have a case in which Pandit Thakur Datta Sharma states that. he had no notice of the applicant's mark. He has, however, admitted that he had about 12 persona in his factory which constituted the clerical staff and amongst them were persons who were in charge of advertising the opponents' mark. It seems to me that the opponents and their agents were well aware of the advertisem!"Jts by the applicant and did not raise any protest till the applicant's mark was adverti& ed in the Trade Mark Journal. In other words the opponents stood by and. allowed the applicant to develop his business and, as I have shown, from small heginning be began to sell these medicines to the extent of about Rs. 43,000/- in 1949. In my opinion, th.is is acquiescence which would come under the phrase 'or other special circumstances' in section 10(2) of the Trade Marks Act, and that appears to me to Ix> fatal to the case of the

pp. 489–490

opponents." Btfore the RegiHtrar it was admitted on behalf of the respondent that hiR goodR were sold mainly in Uttar Pradrsh and there were, at the most, only sporadic sales in ot.hcr States. Taking that circumstance into consiclera.tion the R.ogistrar p1111sed an order allowing regi~tra.tion of 'Lakshmandhara' for sale in the State of l!ttar Prade~h only.

p. 490

From the decision uf t.h" Registrar two appeals were referred to the High Court of Judicature at Allahabad under s. i6 of the Act: one appeal wBB referred by the respondent and the other by the appellant. The respondent complained of the registration being limited to Uttar Pradesh only and the appellant pleaded that rcgis' ration should have been refused altogether. The learned Judges of the High Court held that the wordd 'Amrit' and 'dhara' were common words in the Hindi langua.go and the combined word •Amrit<lhua' meant 'current of nectar' or 'the flow of nectar'; the two words 'La.kshman' and «Ibara' were also well-known common words and combined togct.her they meant 'ourrent or flow of La.k1hman'. The lea.med Judges then ea.id:

p. 490

''There is no possibility of any Indian con(using the two ideas. Even phonetica.I differences a re wide enough not to confuse anybody. 'l'he cll\im of the Amritdhara pharmacy that both the wordR • Amrit and dhara' have become so associated with their goods that the Ude of ea.ch part separately or in any combination is likely to mislead is an untenable claim. The whole phrase 'Amritdhara' ha.d been registered and the monopoly ha8 to be confined only to the use of the whole word. The words of common language lil,!;e 'Amrit' and 'dhara' cannot be made the monopoly of any individual. We, therefore, see no reason to disallow registration of the trade mark

pp. 490–491

"Lakshmandhara'. " As to honest concurrent user from 1923 to 1942 the learned Judges again held in favour of the respon· dent. But on the point acquiescence they held against .the respondent and found in favour of the appellant. They said that from.the fact that b.oth the medicines were being advertised in the same journals .or periodicals it ·did not follow that the attention of the appellant was drawn to the use of the word 'Lakshmandhara' by the respondent, In view, however, of their finding that the two names were not likely to cause any confusion and that the respondent had been an honest concurrent user from 1923 onwards, they held that there was no justification fot; refusing registration to the trade mark 'Lakshmandhara' for the whole of India. They accordingly allowed the appeal of the resp.on· dent and dismissed that of the appellant by their judgment dated March 19, 1958. The appellant then obtained special lea;ve from this Court and the present appeal has been filed in pursuance of the leave granted by this court.

p. 491

Two points have been agitated before us. The first point is whether the name 'Lakshmandhara' was likely to deceive the public or cause confusion to trade within the m~aning of s. 8 and s. 10 ( 1) of the Act. The second point is whether there was such acquiescence on behalf of the appellant in the use of the name 'Lakshmandhara' in the State of Uttar Pradesh as to bring it within 'the· expression 'special circumstances' mentioned in sub.a. IO of the Act. We shall deal with these two points in the order in which we have stated them. ·

p. 491

We mav first read the relevant Rections of the Act, viz. s. s· and IO, 8. Prohibition of registration of certain maUer.-

p. 492

No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of whioh would.- (a) by reason of its being likely t0 deceive or to cause confusion or otherwise, be dieentitled to protection in a Court of

p. 492

justice ; or (b) be likely to hurt the religious susceptibilities of any class of the citizen uf India

p. 492

or (c) be contrary to any law for the time being

p. 492

in force, or to morality.

p. 492

10. Prohibition of registration of identical or similar trade mark.-(1) &Te ae provided in sub-section (2), no trade mark shall be registered in res- ~t of any goods or description of goods which ie mdeutical with a trade mark belonging to a different proprietor and already ,on the ragistn in respect of the eame goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion.

p. 492

(2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper eo to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble ea.eh other in re&peot of the ea.me goods or dC110ription of goods, 1Ubjeet to such conditions and limitations, if any, ae the Registrar may think fit to impoee.

p. 492

(3)

p. 492

It will be noticed that the words used in the sections and relevant for our purpose are "likely to deceive or ca.use confusion.'' The Act does not lay down any criteria. for determining what is likely to deceive or ca.use confusion. Therefore, every oa.se must depend on its own particular fa.eta, and the value of authorities lies not so much in the actual decision a.s in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an oppo· nent may object that the· trade mark is not registera.ble by reason of cl. (a.) of s. 8, or sub-a. {I) of s. IO, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applie::l for is not likely to deceive or cause •Jonfusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark fs likely to deceive or cause confusion by the resemblance to anot,her already on the Reeister if it is likely to do so in the course of its legitimate use in a. market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the oircumstanclll! of the case must be considered. As was observed by Parker, J. in Pianotist Oo. Application (1), which was also a. case of the comparison of two words-

p. 493

"You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fa.ct you must consider. a.II the surrounding oircumstancea and you must further consider what is likely to happ•:m if each of those trade marks is need . in a normal way as a trade mark for the goods of the respective owners. of the ...arb.

p. 493

a. c. ?7•· m. For deoeptive resemblance two important questions are: ( 1) who are the persons whom the resemblanoe must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods whioh he has previously bought, but is doubtful whether that impreBllion is not due to imperfect recollt,ction. (See Kerly on 'frade Marks, 8th edition, p.

pp. 493–494

Let us apply theee tests to the facts of the case under our consideration. It not disputed beforo us that the two names 'Amritdha.ra.' and •L:i.kshmandhara.' a.re in uee in respect of the ea.me description of goods, namely, a medicinal preparation for the alleviation of various ailments. Suoh medicinal preparation will be purchased mostly b~ people wh~ instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products ReJining Co. v. Shangril,a Food Products Ltd. (1), the question bas to be approached from the point of view of a man of average intelligence and imperfoot recollection. To such a man the overall structural and phonetic gimilarity of the two names • Amritdhara' and •Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Laksbman. dhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one fo~ the other. Ao unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and OOll8ider the et.ymological JQeaning thel'llo( ot even consider the mep.nings of the _composite words .as ~current .of nectar' or-'current of Lakshman'. He. would g~ more by_ the overall structural · and phonetic similarity and_ the na.ture-of the medicine be ha.a previously purcha.s~d . or ha.'S been told .about, or about whioh ha.s othc•r .d8~ learnt, and. which he wanti. to purcha.sei. Whe.re ·the trade relates to gt>0cls lar~ely sold to. illiterate or badly -educA.ted persons, it is np answer to that a. person educated in the Hindi language would go by 'the entymological or ideological meaning and, -see ' the difference between 'current of nectar' and 'current of Lak~hma.n'. 'Current of Lakshma.n in a literal sense has no meaning to ~ive it mea.n· ing one must further make the inference that the •current or stream' is as . pure and strona as La.kshman of the .Ramayana. An ordinary Indian villa(?er or townsmen will perhaps· know haksb· man, the story of the R'l.maya.na being familiar to him, but we rloubt if he would etymologine to the -extent of seeiAg the so called ideoJogioal difference between 'Amritdha.ra' and •La.kshma.odhara'. He would go more by the similarity of the two names in the context of the widely known ·medicinal preparation which he wants for his ailm~nts. ·

pp. 494–495

We agree that the use of th~ word 'dhara' -which literally means 'c ·1rrent or stream' is not by itself· decisive of the .matter. What we have to .consider here· is the overall similarity of the comp -site ~ords, having regard to the ciroumstanoe that the goods bearing the two nan:ies_ ate. medioinar preparations of the same descr1pt1on: We ar .aware that the admission of a mark is not to J refused, -because unu~ually stup~d. people, "f?o1s idiots", may be deceived. A cr1t1cal oomparISon ~(" the two names may disclose some points of differen• -ce; but an unwary pnrcbas.,r of average iotelligenoo and imperfect recollection wou~d be deceived by the .overall similarity of the two names having regard to the natur1> of the medicine he is looking for with a ROmewhat vague recollection that he had purrhaeed a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing-the whole word has to be conaidered. Jn the case of the application to register 'Ereotiks' (opposed by the proprietol'8 of the trade mark. •Erector') Far\\ ell, J. said in William Bailey (Birmingham) Ltd.'s Application (1) :

pp. 495–496

"I do not think it is right to take a part of the word and compare it with a part oi theother word; one word must be considered as a whole and compared with the other word as a whole, ......••.••.... 1 think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word".

p. 496

Nor do we think that the High Court was right in thinking that the appellant was claiminll a monopoly in the common Hindi word 'dhara'. We do not think that is quite the position here. What the appellant is claiming is its right under s. 21 of the Act, the exclusive right to the use of its trade mark, and to oppose the registration of a trade mark which ao nearly resembles its trade mark that it is likely to deceive or cause confusion.

p. 496

A large number of decision& relating to thfl nee of composite words, such as Night Cap and Red Cap, Limit and Summit, Rito and Lito, Notrate and Filtrate, etc. were cited in the High Court. Some more have been cited before us. Such decisions, examples of deceptive resemblance arising oui of contrasted words, have been summarised at pag& 429 to 434 in Karly on Trade Marks, 8th Edition. No useful purpose will be served by referring to them all. As we have said earlier, each caae must be decided or its o-WU fact. What degree of resemblance iii necesl!&ry to dll<ieive or cause oonfu· sion must the nature of things be incapable of definition a priori.

pp. 496–497

As to the decisions in annexure 'A', it has been argued before us that they were not at all admissible by reason of ss. 40 to 43 of the Indian Evidence Act, 1872. On behalf of the appE'llant it has been contended that· they were admissible under s. 13 of the Evidenoi> Act as showing the particular instances in which the appellant claimed its ri1tht under 8. 21 of the Act. We consider it unneoeBSary to decide this question for the purposes of this case because those decisions even if they are admiBBible under s. ~3 do not throw any light on the question whether· •Amritdhara' a.nd 'Lakshmandhara' so nearly resemble each oth~r as to cause deception or confusion. That is a question which we must determine as a case of first impression and irrespective of the earlier decisions.

p. 497

On a consideration of all the circumstances, we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of e. 10(1) of the Act and Registrar was right in the view be expressed. The High Court was in . error taking a contrary view.

p. 497

We now go the second question, that of acquiescence. Here again we are in Bgreem11nt with thti Registrar of Trade 'Marks, who in a paragraph of hie order quoted earlier iri this judgment has summarised the facts and circu111stances on which the plea ofacquiescen~e was based. The matter bas been put thus in Halabury's Lawe of England, Vol. 32 (second edition) pages 659-657, paragraph 966. ·

p. 497

" H a trader allows another person who is acting in good faith to build up a reputa· tion under a trade name or mark to which he has rights, he may lose his right to comp· lain, and may even be debarred from him· self using su<'h name or work. But even long user by another, if fratidulant, does not affect the plaintiff's right to final injunction; on the other hand prompt warning or action before the defendant has built up any good-

pp. 497–498

will may materially assist the plaintiff's case". We do not think that there was any fraudulent user by the respnndent of his trade name •La.kshman·

p. 498

.. dha.ra'. The name was first used in 1923 in small way in Utta.r Pradesh. Later it was more exten· sively used and in the same journals the two trade murks were public-ised. Tht- finding of the Registrar is that the appellant and

p. 498

a!!ent were well aware of the advertisemt>nta (of the respondent, and tho appellant stood by and allowed the respondent to develop his busine88 till it grew from a ~ma.II beF,inning in 1923 to an annual turnover of RI!. 43,000/· in 1946. 'T'hese circum- Htances establish the plea of acquiescence and bring .. the ca.s" within sub-a. (2) of s. 10, and in yiew of • the a.dmi•Bion made on bebalf of the respondent that his goods were sold ma.inly in Utta.r Pradesh, the Registrar right in imposing the limitation which he imposed.

p. 498

For these reasons, we would allow the appeal, set aside the Judgment and order of the High Court, and restore those of the Rt-gistra.r of Trade Marks, Bombay, dated Septemoor 10. 1953. In the <'ircumstances of this case, there will be no order for costs.

p. 498

Appeal allowed.

p. 498