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It is, I think, for this very reason that a geographical name in prima facie denied registrability. PRE |
For, just as a manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim for his own a territory, whether country, county or town, which may be in the future, if it is not now, the seat of manufacture of goods similar to his to own. Ratio |
Of course, where the geographical area is very small there is a possibility of the inherent incapability,to attain distinctiveness becoming attenuated, but we do not go into these details as they are unnecessary for our present purpose. Ratio |
The learned Counsel is therefore right in his submission that if the right of the respondent to the registration of his mark had to be considered solely on the terms of section 6(1), the appellants submissions as regards the non registrability of the respondent 's mark would have great force. Ratio |
That, however, is not the position here. Ratio |
The learned District Judge has, on the basis of evidence recorded a finding that the mark or trade name 'Navaratna Pharmaceutical Laboratories ' had by user acquired distinctiveness in the sense of indicating the respondent and the respondent alone as the manufacturer of goods bearing that mark and that finding has bee... |
The learned District Judge has further held that the respondent has been using that mark or a permissible variant of that mark from long before the 25th February 1937, and that in consequence, notwithstanding that the mark might not satisfy the requirements of section 6(1) as explained by sub sections(2) & (3) of that ... |
We do not find any error in the approach of the learned District Judge to this question. Ratio |
In the first place, there was the intention on the part of the proprietor of the mark to indicate by its use the origin of the goods on which it was used. Ratio |
There was also indubitable evidence regarding the recognition of that mark as indicating origin on the part of that section of the public who buy these goods in the course of trade or for 748 consumption. Ratio |
Thus the finding was that by reputation the mark had come to denote the goods of the. Ratio |
Besides the words were not a merely laudatory expression in relation to the goods, but descriptive though as such they would prima facie not be distinctive. Ratio |
Length of user would, of course, be a material factor for the mark to become distinctive and the learned District Judge found that by such a long user the mark had become exclusively associated with the goods of the respondent in the market. Ratio |
Though the learned Judges of the High Court have not dis cussed this question in their judgment, they have affirmed in general terms the conclusions recorded by the District Judge on this point. Ratio |
There being concurrent findings on the question as to whether the respondent 's mark has acquired distinctiveness as a matter of fact, and there being no error of law in the criteria applied for reaching them, it would not be open to the appellant to challenge the correctness of that finding and, indeed, learned Counse... |
What he, however, submitted was that on a proper construction of the proviso to section 6(3) of the Act marks which from their very nature were inherently incapable of acquiring distinctiveness could not qualify for registration and the Courts below therefore erred in holding the marks which because of their being desc... |
This takes us to the consideration of the proper construction of the proviso. Ratio |
Closely examined, the arguments of the learned Counsel on this matter boils down to this that the proviso really did not introduce any standard of distinctiveness different from that which had been provided by the terms of section 6(1) as explained by sub section(2) and the main part of sub section(3); in other words, ... |
In support of this submission the learned Counsel relied on the view expressed by Mr. section Venkateswaran in his comments on section 6(3) at pages 152 154 of his Treatise on Trade Mark Act 1940 which view he submitted had found judicial acceptance in a decision ,of the Calcutta High Court reported as In the matter of... |
The learned Judges, however, without any discussion of the points involved, expressed their opinion that even if the mark came within the prohibition in cl.(d) of sub section(1) of section 6, an old mark i.e., marks in use from before February 25, 1937 would qualify for registration if there was evidence of factual a d... |
This decision has been referred to and relied on by the learned District Judge in the case before us; but as it does not contain any reasons for the decision, it may be omitted from consideration. Ratio |
The main part of the learned Counsel 's submission as regards, the construction of the proviso was based on the comment in Mr. section Venkateswaraies treatise which learned Counsel adopted ' as part of his argument. Ratio |
no primary requisite for attracting the proviso is that the trade mark must have been continuously used in relation to the same goods as those in relation to which registration is applied for from a period prior to February 25, 1937. Ratio |
It is true that in the present case the relevant mark as used before February 25, 1937 was "Navaratna Pharmacy" and ' the mark now on the register the validity of whose registration under the is in question is "Navaratna Pharmaceutical Laboratories". Ratio |
But it would be noticed that by the words within the brackets in the proviso marks "either in their original form or with additions or alterations not substantially affecting its identity" qualify for the special privileges accorded ' to old marks. Ratio |
It was not contended before the Courts below or before us that the mark now in question did not satisfy this test when compared with that which the respondent was using prior to February 25, 1937. Ratio |
This being conceded, the only question for consideration is whether the last part of the proviso that the Registrar may accept evidence of acquired distinctive ness as entitling a mark for registration notwithstanding the fact that "the trade mark is not adapted to distinguish as aforesaid", could apply to cases where ... |
The entire argument on this part of the case is merely based on the use of the expressions 'adapted to distinguish as aforesaid ' and 'distinctiveness ' in the concluding portion of the proviso. Ratio |
It was not disputed that on the words of the proviso when the Registrar recorded a finding that the mark submitted for registration was "not adapted to distinguish as aforesaid", that is, that the mark did not fulfill the requirements of the tests suggested by the main part of sub section(3), he was authorised to permi... |
It was, however, urged that the word 'distinctiveness ' in the expression "acquired dis tinctiveness" had to be understood in the sense in which it is defined in sub section(2) where it is stated to mean practically " adapted to distinguish", the content and the significance of which is elaborated in sub section. ARG |
The submission was that at that stage, when accepting evidence of acquired distinctiveness one is again thrown back on sub sections (2) and (3), with the result that unless the tests of distinctiveness and of "adaptation to distinguish" which are explained in sub sections(2) and (3) are satisfied, no amount of evidence... |
In other words, the argument was that if a mark was one which was prohibited from being registered under section 6 (1 ) (d), that ban which is not lifted by proof of acquired distinctiveness in the case of new marks not falling within the proviso is not lifted either in the case of old marks which had been in use conti... |
It would be seen that if this argument were accepted, the proviso adds nothing to the section and makes no variation in the law as regards old marks which had been in use continuously from before the specified date. Ratio |
It would also make meaningless the words 'shall not refuse registration ' by reason only of the fact that the trade mark is not 'adapted to distinguish ' occurring in the proviso. Ratio |
It was said that this construction which would render the proviso otiose and a futility was necessitated by the opening words of sub section(2) where the definition of the expression "distinctive" was said to be "for the purposes of this section and that the proviso to the sub section being part of the section, the wor... |
We feel unable toaccept this construction, nor do we read the opening words ofsub section(2) as necessarily leading to this result. Ratio |
Briefly stated,"distinctive" is defined in sub section(2) as "adapted to distinguish" and the latter phrase explained in language which might exclude what is negatived by section 6 (1 ) (d). Ratio |
But that, however, does not solve the problem created by the words of the proviso "Shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid". Ratio |
The use of the words "as aforesaid" takes one back first to sub section 751 (3) and then on to sub sectionand necessarily also to the provision in section 6(1) (d) where marks which are incapable of acquiring distinctiveness are dealt with. Ratio |
Hence even on the terms of the proviso, however construed, it is not possible to escape the conclusion that a mark which is not "adapted to distinguish" by the application of the tests laid down in section 6(1) could still qualify for registration by proof of acquired distinctiveness. Ratio |
For the present purpose it is unnecessary to enter into an examination of the general nature of a proviso and of its function in statutes. Ratio |
It is sufficient to point out that it would not be a reasonable construction of any statute to say that a proviso which in terms purports to create an exception and seeks to confer certain special rights on a particular class of cases included in it should be held to be otiose and to have achieved nothing merely becaus... |
A construction which would lead to old marks and new marks being placed on the same footing and being subjected to the same tests for registrability cannot, in our opinion, be accepted. Ratio |
In this connection, some support was sought for the cons truction pressed upon us by the learned Counsel for the appellants by reference to section 20 of the Act which reads : "(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade ma... |
(2)Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. ARG |
" It was urged that if every mark which had been in use prior, to February 25, 1937 qualified for registration under the proviso to section 6(3), there could really be no cases where the Registrar could refuse registration, with the result that the contingency contemplated by section 20 of the Act could never arise. AR... |
This was 752 stated to support the construction of the proviso which learned Counsel commended for our acceptance. Ratio |
Here again, we do not see any substance in this argument. Ratio |
A mark might have been used even prior to February 25, 1937; but it might not quality for registration under the proviso to section 6(3) by not having acquired that degree of factual distinctiveness which the Registrar considers is sufficient to enable it to qualify for registration. Ratio |
It is therefore possible to conceive of cases where even if the proviso to section 6(3) were construed in the manner in which we 'have indicated, there would still be scope for the rejection by the Registrar of a trade mark in use prior to the specified date. Ratio |
That in our opinion, is the true ratio of the decision of McNair, J. in India Electric Works Ltd.(1) on which Mr. Agarwala relied in this connection. Ratio |
The Court was there concerned with an appeal from an order of the Registrar refusing registration in respect of an old mark. Ratio |
The mark in question was the word 'India ' as applied to electric 'fans. Ratio |
The learned Judge dismissed the appeal on the ground that the word 'India ' was a geographical word and therefore would not qualify for registration being prohibited by section 6 (1) (d). Ratio |
The learned Judge also considered whether the mark could 'qualify for registration under the proviso. Ratio |
The conclusion reached on this part of the case was that the applicant had not established factual acquired distinctiveness to qualify for registration, and that the Registrar was therefore right in the finding that he recorded on this matter. Ratio |
Proof of user, the learned Judge hold, was not ipso jure proof of acquired distinctiveness 'and this is obviously right and does not advance the appellant 's submission in regard to this question. Ratio |
Though there are some observations which might be wider, it substantially proceeded on ,accepting the finding of the Registrar regarding the applicant 'having failed to establish factual acquired distinctiveness for his mark. Ratio |
That case therefore does not assist the learned Counsel for the construction that he seeks to put on the proviso to section 6(3). Ratio |
As we have pointed out earlier, there are concurrent findings of fact on this point that through long user from 1926 onwards, the mark had become associated exclusively in the market with the pharmaceutical products manufactured by the respondent. Ratio |
The finding is not capable of being challenged before us and was not, in fact, attempted to be challenged. Ratio |
From this it would follow that the respondents mark was rightly registered and that ,(1) 753 he was entitled to protect an invasion of his right by seeking a perpetual injunction from persons who invaded those rights. Ratio |
The next part of the learned Counsel 's argument related to the question whether the Trade Mark used by the appellant viz., `Navaratna Pharmacy ' "so nearly resembled the trade mark of the respondent as to be likely to deceive or cause confusion in the course of trade" within section 21 of the Act. Ratio |
The mark is not identical and so the question is whether the appellant 's mark is deceptively similar to the respondent 'section On this matter also, there are concurrent findings of the Courts below regarding the deceptive similarity of the two marks. Ratio |
That the words 'Navaratna Pharmacy ' and 'Navaratna Pharmaceutical Laboratories ' are similar in the sense spoken of by section 21 does not appear to us to be of much doubt. Ratio |
But the learned Counsel 's submissions were two fold: (1) that the Courts below had found that the word 'Navaratna ' was a word in common use in the trade in Ayurvedic preparations and the courts rightly held the respondent could not claim exclusive rights to the use of that word in the mark. ARG |
In these circumstances, Mr. Agarwala submitted that the Courts below should have insisted on either the respondent disclaiming exclusive rights to the word 'Navaratna ' in the trade mark 'Navaratna Pharmaceutical Laboratories ' or that the disclaimer should have been ordered as a condition of the trade mark remaining o... |
, (2) The finding by the Courts below that the marks were deceptively similar was directly contrary to and inconsistent with their finding that the packing, label, get up etc., in which the appellant 's goods were marketed was not likely to cause any confusion in the market or deceive any purchasers, wary or otherwise ... |
As regards the first contention regarding disclaimer and the reference to section 13, the matter stands thus. Ratio |
Under the terms of section 13 of the Act, an order directing disclaimer could have been passed only by the High Court when dealing with the appellant 's application under section 46 (2) of the Act. Ratio |
The application that he filed contained no prayer to direct a disclaimer, and no submission appears to have been made to the High Court when dealing with the petition or even with the appeal that the respondent should be directed to disclaim. Ratio |
In these circumstances, we do not consider it proper to permit the appellant to urge this argument before us. Ratio |
754 The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with tho... |
We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under section 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. Ratio |
The finding in favour of the appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their gener... |
These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of ... |
While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. Ratio |
The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (Vide section 21 of the Act). Ratio |
The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. Ratio |
No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered. Ratio |
trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. Ratio |
But there the correspondence between the two ceases. Ratio |
In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant 's mark is likely to deceive, but where the similarity 755 between the plaintiff 's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the .conclusion that there is an im... |
Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin differe... |
When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be "in the course of trade,, the question whether there has been an infringement is to be decided by comparison of the two marks. Ratio |
Where the two marks are identical no further questions arise; for then the infringement is made out. Ratio |
When the two marks are not identical, the, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide section 21). Ratio |
A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by ... |
But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. Ratio |
This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. Ratio |
The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. Ratio |
The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. Ratio |
The purpose of the comparison is for determining whether the essential features of the plaintiff 's trade mark are to be found in that used by the defendant. Ratio |
The identification of the essential features of the mark is in essence p./65 5 756 a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. Ratio |
It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. Ratio |
The mark of the respondent which he claims has been in fringed by the appellant is the mark 'Navaratna Pharmaceutical Laboratories ', and the mark of the appellant which the respondent claimed was a colourable imitation of that mark is 'Navaratna Pharmacy. Ratio |
Mr. Agarwala here again stressed the fact that the 'Navaratna ' which constituted an essential part or feature of the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant 's mark were disregarded, there would not be enough material left for holding that the appell... |
But this proceeds, in our opinion, on ignoring that the appellant is not, as we have explained earlier, entitled to insist on a disclaimer, in regard to that word by the respondent. Ratio |
In these circumstances, the trade mark to be compared with that used by the appellant is the entire registered mark including the word 'Navaratna '. Ratio |
Even otherwise, as stated in a slightly different context:(1) "Where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as wholes and not to disregard the parts which are common". Ratio |
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