F. HOFFMANN-LA ROCHE & CO. LTD. v. GEOFFREY MANNERS & CO. PVT. LTD.
Citation: [1970] 2 S.C.R. 213; 1969 INSC 223
Court: Supreme Court of India
Bench: J.C. SHAH , V. RAMASWAMI
Judgment date:
Case summary
1969 INSC 223. Supreme Court of India judgment dated 1969-09-08. F. HOFFMANN-LA ROCHE & CO. LTD. v. GEOFFREY MANNERS & CO. PVT. LTD. Read the judgment and...
Judgment text
214 SUPREME COURT REPORTS (1970] 2 S. C. R A F. HOFFMANN-LA ROCHE & CO. LTD. v. GEOFFREY MANNERS & CO. PVT. LTD. September 8, 1969 B [J. C. SHAH AND V. RAMASWAMI, JJ. ] The Trade and Merchandise Act, 1958, ss. 12(1) and 9(1)-Vitamin preparations-'DROPOVIT" whether a trade mark deceptively similar to 'PROTOVIT' so as to o/jened s. 12(1)-'DROPOVIT' whether a descriptive word or an invented word for the purpose of s. 9(1)-Tests. In. 1~46 the trade mark 'PROTOVIT' was registered for one of the vitamin preparations manufactu'red by the appellant company. In 1957 the respondent company applied for registration of its mark 'DROPOVIT' in respect of "medical and pharmaceutical preparations and substances". The application was granted. When the appellant came to know about this trade mark it asked the respondent to alter it.
On the 'respondent's refusal to do so, the appellant in 1959, applied to the Registrar for rectification of the Register of Trade Marks by removal thereform of the respondent's trade mark. Later the appellant amended its application by adding the ground that 'DROPOVIT' was not an invented word. The Joint Registrar by letter dated August 5, 1961 rejected the appellant'• application for rectification. The appellant went in appeal to the Bomhay High Court. During the hearing of the appeal the respondent restricted the designation of goods covered by the mark 'DROP0V! T' to "medical preparations and, substances containing principally vitamins. " The Single Judge as well as the Division Bench decided in favour of the respondent. The appellant came to this Court with certificate. The questions that fell for consideration were : (i) whether the word 'DROPOVIT' was deceptively similar to the word 'PROTOVIT' and thus offended the provision of s.
12(1) of the Trade and Merchandise Act, 1958: (ii) whether the word 'DROPOVIT' was an invented or a descriptive word for the purpose of s. 9 (1) of the Act. HELD : The appeal must be dismissed. (i) In order that a trade mark may be found de f the Act a word must not only be newly coined, in the sense of not being already current in the English lan- F guage, but must be- such as inot to convey any meaning, or, at any rate, any obvious meaning to ordinary Englishmen. It must be a word having no meaning or no obvious meaning until one has bee)ll assigned to it. " In the case of De Cordova and others v. Vick Chemical Co. (') the Privy Council referred to that interpretation of Parker J. , as "the best standing interpretation". The question arising in this case is whether the word "DROPOVIT" would strike an ordinary person knov·ing English as meaning "DROP OF VITAMIN".
In this connection the High Court has pointed out that the original application for rectification did not contain the ground that the word of "DROPOVIT" was descriptive. It was, therefore, legitimate t<> draw the inference that the word (I) 25 R. P. C. 565. (1) '8 R. P. <'. 10]. ROCHE & co. V. G, MANNERS & co. (Ramaswami, J. ) 221 "DROPOVIT' did not •trike even Messrs Depenning and De- Pqnning the legal advisers of the appellant as being descriptive. It was also pointed out that in his judgment Mr. Justice Tarkt. ade has remarked that when the case was opened before him he did not understand that the word "DROPOVIT" meant "DROP OF VITAMIN" till the explanation of that word was given to him. We see no reason, therefore, to . differ from the reason\n_g of the 8 High Court on this aspect of the case. If the word "DROPOVIT" is not a tlescriptive word it mnst be held to be an invented word.
It is true that the word "DROPOVIT" is coined out of words commonly used by and known to ordinary persons know4ng English. But the resulitng combination produce, a new word, a newly coined word which does not remind ain ordinary person knowing English of the origiaal words out of which it is coined unless he is so told or unless at least he devotes some thought to it. It follows that the word "DROPOVIT" being an invented word was entitled to be registered as a trade mark aind is not liable to be removed from the Register on which it already exists. For the reasons expressed we hold that this appeal fails and must be dismissed with costs. G. C. Appeal dismissed . •
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