KAVIRAJ PANDIT DURGA DUTT SHARMA v. NAVARATNA PHARMACEUTICAL LABORATORIES
Citation: [1965] 1 S.C.R. 737; 1964 INSC 221
Court: Supreme Court of India
Bench: P.B. GAJENDRAGADKAR , J.C. SHAH, N. RAJAGOPALA AYYANGAR
Judgment date:
Case summary
1964 INSC 221. Supreme Court of India judgment dated 1964-10-20. KAVIRAJ PANDIT DURGA DUTT SHARMA v. NAVARATNA PHARMACEUTICAL LABORATORIES. Read the...
Judgment text
KAVIRAJ PANDIT DURGA DUIT SHARMA v. NAVARATNA PHAR.... IACEUTICAL LABORATORIES October 20, 1964 (P. 'B. GAJENDRAGADKAR, C. J. , J. c. SHAH AND N. RAJAGOPALA AYYANGAR JJ. ) ' Trade Morb Act (5 'of 1940), s. 6-Provisa-Scope of-Action for infringement of trade mark> and action for passing off of good:. -Difference in factf! TS to be considered. The respondent, a firm manufacturing medicinal products, was the proprietor of two registered trade marks .. Na'\'1! 'atna" and "'Navaratna Pharmaceutical Laboratories" from a period prior to 25th February 1937•. · When the appellant, who was also a manufacturer of medicinal preparatiom, wught the regi•tration of the words "Navaratna Pharmacy" as his trade mark the r°'pondent objected successfully. The appellant -then moved the Registrar of Trade Marn for removing from the register, the trade mark ·~avaratna" and for deleting the word .. Navaratna" from the other trade mark of ohe respondent.
The Registrar directed him to move the High Conrt for the rectification, as the respondent had by that time filed a suit in the District C. owt for a permanent injunction restraining the appellant from selling any preparation under a mark containing the word "Navaratna". The appellant aceordingly filed an original petition in the High Court. The suit in the District Court was decreed in favour of the respondent with res- . pect to the . trade mark ,"Navaratna Pharmaceutical Laboratories. '' An appeal against the decree filed by the appellant, and his Original Petition were beard together by the High' Court . and the decree of the District Conrt in favour of the respondent was confirmed. It was held that : (i) having regard to the method of packing adopted by the appel!
ant, he WM not guilty of passing off, (ii) the respondent was not entitled to any relief on the ground of the infringement of the mark "Navaratna" as it wou a common word in Ayurvedic phraseology and used ·in connection with several medicinal preparations 7 and (iii) the trade name "Navaratna Pharma=itical Laboratories" had been used as a trade mark, by the respon· dent, for a very long time and had come to denote exclusively bis goods; and that the trade mark having been in use from before the specified date February 25, 1937 and having acquired factual distinctiveness, was regi•· terable under the proviro to s. 6(3) of the Trade Marks Act, 1940. In appeal to the Supreme Court it was contended that: (i) the decision of the High Court that the trade mark "Navaratna Pharmaceutical Laboratories" was validly registerahle was inconsistent with the finding · that ""Navaratnan which was tbe crucial word in the trade mark was only a. descriptive word in regard to v.
rhich the respondent could obtain no exclusive right, and (ii) the finding that the marks of-the aopellant and re•pOn· dent were deceptively similar was inconsistent with the finding that the packing in which the appellant's goods were marketed wa. not likely to cause confusion or deceive purchasers. · HELD : (i) A mark which is not "adapted to distinguish" by the application of the tests laid down ins. 6(1) of the Act, could still qualify for registration by virtue of the provi•o to s. 6(3), by proof of acquired distinctiveness. Under the proviso, with respect to marks in use from a d2te prior to 25th February 1937, "the Registrar shall not refuse registra-lion by reason only of the fact that the trade mark is not adapted to dis- A tinguish as aforesaid, and may accept c'idence of acquired dis_tinc_liven. osa as enutling the trade mark to rcg1strat1on''. lbe v. ·ord "d1st1nct1vcnrM" cannot mean "adapted LO dhitingu1sh" for then, the proviso \.
\''OUld add nothing to the section and would n1akc no variation in the Jaw as between new marks and old marks which had been in use continuously from before the specified date. A constructicn ,. ,. ·hich v,:ould lead to old marks and new marks being placed on the same footing and being subjected to the same tests for registration cannot be accepted. l-lo\\. ·c,•cr, a mark might B have been used prior to the spedficd date, but it might not qualify for registration under the proviso by not having . In tho first instance, the appellant moved the Registrar of Trade Marks for removing from the register the trade mari. : "Navaratna" and the word "Navaratna" in the other mark of the respondent. By this date, however, the respondent had filed suit No. 233 of 1951 (from which C. A. No.
522of1962 arises) before the District Judge, Anjikaimal, for a permanent injunction restraining the appellant from advertising, selling or offering for sale any preparations under a trade mark combining the word 'Navaratna' or any similar word etc. By reason of the pendency of this F proceeding in which the validity of the registration of the rcspon-dent'11 mafk was directly involved the Registrar refused his application, and directed the appellant to move the High Court within wh°'e jurisdiction the District Court was situated for the rectification of the register by deleting the respondent's mark. The appellant accordingly filed 0. P. No. 19 of 1952 in the High Court of G Travancore-Cochin praying that the registration of the word ". "lavaratna" by itself or as part of other marks as a trade mark for goods belonging to the respondent be removed from the register. Civil Appeal 523 of 1962 arises out pf the order of the High Court on this petition. This original petition No.
19 0f 1952 was kept pending in the High Court after it was ready for II bearing and was heard along with the appeal against the decree of the District Judge in Original Suit No. 233 of 1951. DURGA DUTT V, NAVARATNA LAB. (Ayyangar . T. ) H 1 A The Original Suit was, as stated earlier, for a perpetual injunction against the appellant for using the word "Navaratna" and the cause of action for that suit was stated to be that the plaintiff (respondent before us) being proprietor of the two registered trade marks "Nnvaratna" and "Navaratna Pharmaceutical Laboratories" h11. d an exclusive right to the use of those marks for his medicinal B preparations and that the said right was infringed by the defendant (appellant before us) advertising his goods under the name "Navaratna Kalpa" with the trade origin of the goods being described as "Navaratna Kalpa Pharmacy". There was also an alle-g11. tion that by use of these marks the defendant was passing off c hi~ goods as those of the plaintiff.
By his written statement the defendant raised principally three points: I. (a) .......... That the word "Navaratna" in its etymo- D logical sense meant Ayurvedic preparations of a particular com-po~ition and that the word had been generally adopted by several firms and organisations for designating their preparations which they vended with that description. It was therefore submitted that the plaintiff could claim l)\J extlusive title to the use of that word which was a common word for the description of the product E as a trade mark to designate ils pharmaceutical preparations. I. (b) As regards the trade mark "Navaratna Pbannaceuti-cal Laboratories" which was in fact the name in which the plaintiff carried on its business, the defence was that the crucial integer in that mark was the expression "Navaratna" and that if the plain- F tiff.
was not entitled to the exclusive use of the word "Navaratna" to ·designate its products, the combination of the word with the t\\·o other words "Pharmaceutical" and Laboratories" which were ordinary English words descriptive of the place where medicines were prepared could )10t render the trade mark G a registerable one. For these two reasons the defence was that no claim could be made to relief under s. 21 of the Trade Mcuks Act, 1940. (2) Next it was submitted that even on the basis that the plaintiff was entitled to the use of the word "Navaratna" oither H alone or in the combination ··Navaratna Pharmaceutical Laboratories", still the use of the trade mark by the de(endant of t8e woJ tinctiveness. 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.
The main part of the learned Counsel's submission as regards the construction of the proviso was based on the comment in Mr. S. Venkateswaran's treatise which learned Counsel adopted as part of his argument. The 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. 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 Trade Marks Act is in question is "Navaratna Pharmaceutical Laboratories". 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.
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. This being conceded, the only question for consideration is whether the last part of the proviso that the Registrar may accept evidence of acquired distinctiveness 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 trade mark has a direct reference to the character or quality of the goods or is otherwise not qualified for registration under cl. ( d) of sub-s. (1 ) , 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. It was not disputed that on the words of the proviso when the Registrar· (I} A. I. R. 1957 All. 683.
recorded a finding that the ·mark submitted for registration was "not adapted to distinguish as aforesaid", that is, that the mark ·did not fulfil the requirements of the tests suggested by the main part of sub-s. ( 3), he was authorised to permit evidence being led as to "acquired distinctiveness" and to register the mark, if the evidence satisfied him on this point. It was, however, urged that the word 'distinctiveness' in the expression "acquired distinctiveness" had to be understood in the sense in which it is defined in sub-s. (2) where it is stated to mean practically "adapted to distinguish", the content and the significance of which is elaborated in sub-s. ( 3). The submission was that at that stage, when accepting evidence of acqui1ed distinctiveness one is again thrown back on sub-ss. (2) and ( 3), with the result that unless the tests of distinctiveness and of "adaptation to distinguish" which are explained in sub-ss.
(2) and (3) are satisfied, no amount of evidence led before the Registrar of factual acquired distinctiveness would suffice> to permit registration. In ·other words, the argument was that if a mark was one which was prohibited from being registered under s. 6 (I)( 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 continuously as a trade mark from before February 25, 1937. 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. It would also make meaningless the words 'shall not refuse registration' hy reason only of the fact that the trade mark is not 'adapted to distinguish' occurring in the proviso.
It was said that this construction which would render the proviso otiose and a futility was necessitated by the opening words of sub-s. (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 words there had to be understood in the sense defined. We feel unable to accept this construction, nor do we read the opening words of sub-s. (2) as necessarily leading to this result. Briefly stated, "distinctive" is defined in sub-s. ( 2) as "adapted to distinguish" and the latter phrase explained in language which might exclude what is negatived by s. 6 ( l )( d). But that, however, docs not solve the problem created by the words of the proviso "Shall not refuse registration by teason onlv of the fact that the trade mark is not adapted to distinguish as aforesaid". ·The use of the words "as aforesaid" takes one back first to sub-s. DURGA DUTT v. NAVARATNA LAB. (Ayyangar !.
) 7 51> ( 3) and then on to sub-s. ( 2) and necessarily also to the provision ins. 6(l)(d) where marks which are incapable of acquiring distinctiveness are dealt with. 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 s. 6(1) could still qualify for registration by proof of acquired distinctiveness. For the present purpose it is unnecessary to enter into an examination of the general nature of a proviso and of its func-tion in statutes. 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 because of the word 'distinctiveness' used in it which has been defined elsewherei.
A construction which would lead to old marks and new marks being placed on the sam.. e footing and being subjected . to the same tests for registrability cannot, in our opinion, be accepted. In this connection, some support was sought for the construction pressed upon us by the learned Counsel for the appellants by reference to s. 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 mark unless such trade mark has been continuously in use since before the 25th day of February, 1937, by such person or by a predecessor in title of his and unless an application for its registration, made within five years from the commencement of this Act, has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused.
(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. " It was urged that if every mark which had been in use prior to February 25, 1937 qualified for registration under the proviso to s. 6(3), there could really be no cases whei:e the Registrar could refuse registration, with the result 'that the contingency contemplated by s. 20 of the Act could never arise. This was stated to support the construction of the proviso which learned Counsel commended for our acceptance. Here again, we do not see any substance in this argument. A mark might have been used even prior to February 25, 1937; but it might not qualif} for registration under the proviso to s.
6(3) by not having acquired that degree of factual distinctiveness which the Registrar considers is sufficient to enable it to qualify for registra me 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. That case therefore does not assist the learned Counsel for the construction that he seeks to put on the proviso to s. 6(3). ' As we have pointed out earlier, there are concurrent findings of fact on this point that through long user from 1926 onwards, the niark had become associated exclusively in the market with the pharmaceutical products manufactured by the respondent. The finding is not capable of heing challenged bciore u' and was not, in iact, attempted to be challenged. From this it would ti follow that the respondent's mark was rightly registered and that (IJ 49 C. W. N. 42. DURGA DUTT v. NAVARATNA LAB. (Ayyangar !.
) 753 he was entitled to protect an invasion of his right by seeking a perpetual injunction from persons who invaded those rights. 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 s. 21 of the Act. The mark is not identical and so the question fs whether the appellant's mark is deceptively similar to the respondent's. On this matter also, there are concurrent findings of the Courts below regarding the deceptive similarity of the two marks. That the words 'Navaratna Pharmacy' and 'Navaratna Pharmaceutical Laboratories' are similar in the sense spoken of by s. 21 does not appear to us to be of much doubt.
But the learned Counsel's submissions were two-fold: ( l) 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. 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 'N'avaratna Pharmaceutical Laboratories' or that the disclaimer.. should have been ordered as a condition of the trade mark remaining on the register under s. 13 of the Act. , (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 on the basis of which the claim for passing off was rejectCNI. As regards the first contention regarding disclaimer and the reference to s. 13, the matter stands thus. Under the terms of G. s. 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 s. 46 (2) of the Act. 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. In these circumstances, we do not consider it proper to permit the appellant to urge this argument before us.
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 those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complair:cd both of an invasion of a statutory right under s. 21 in respect of a registered trade mark and also of a passing off by the use of the same mark.
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 general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent. 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 that mark or a colourable imitation thereof.
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. 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 s.. 21 of the Act). The use by the defendant of the trade mark of the plaintiff i~ not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of pa~ ing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourablc imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark.
But there the corres-pondence between the two ceases. 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 DURGA DUTT v. NAVARATNA LAB. (Ayyangar !. ) 755 A between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the es~ential 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 s.
ale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to dii-tinguish his goods from those of the plaintiff. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's 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. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered ( Vide s. 21).
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 con-cept indicated by the earlier words "likely to deceive''. 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. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exist to G" cause deception not being capable of definition by laying down objective standards. 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. The resemblance may be phonetic, visual or in the basic idea repre-se]lted by the plaintiff's mark. 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. The identification of the essential features of the mark is in essence L2Sup. /65-5 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. 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 rc~i. 1-tered mark of the plaintill. • The mark of the respondent which he claims has been infringed by the appellant is the mark 'Navaratna Pharmaceutical Laboratories', and the !
Dark of the appellant which the respondent claimed was a colourable imitation of that mark is 'Navaratna . Pharmacy'. Mr. Agarwala here again stressed the fact that the 'Navaratna' which constituted an essential part or feature c>f the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant's mack were disregarded, there would not be enough material left for holding that the appellant had used a trade mark which was deceptively similar to that of the respondent. But this proceeds, in our opinion, on ignorin~ that the appellant is not. as we have cx- ;>lained earlier, entitled to insist on a disclaimer in regard to that word by the respondent. In these circumstances, the trade marl:: to be compared with that used by the appellant is the entire regis1cred mark including the word 'Navarntna'.
Even otherwise, as stated in a slightly different context:(') "Where common marks are included in the trade marks to be compared or in one of them, the proper c0urse is to look at the marks as wholes and not to disrcganl the parts which are conunon". It appears to us that the conclusion reached by the Courts below that the appellant's mark is deceptively similar to that of the rcspo11de11" cannot be stated to be erroneous. Besides, thi' quc-;tion of deceptive similarity is a question of fact, unless the te'1 cmp'oyc-0 for determining it suffers from error. ! rt the present case, it was not suggested that the Courts below had committed any error in laying down the principles on which the comparison has to be made and deceptive similarity ascertained. (Sec per Lord Watson in Attorney-Genera/ for the Dominion of CaMda v. Auorne. v-Gcnera/ for Ontario etc. ) (2). As there a.
re concurrent findings of fact on thls matter, we do not propose lo enter into a discussion of this question de novo, since we are sa1i;\Jcd that the conclusion reached is not unreasonable. (I) K. rriy on Trade . \/arl. :s 8th . EJn. 4G7. (2l [1897! A. C. 199. DURGA DUTT v. NAVARATNA LAB. (Ayyangar /. ) 757 A Lastly it was submitted that this was a case of honest con-c<1rrent user within s. 10(2) of the Act. This point was, however, not raised in any of the <;:ourts below and we do not propose to entertain it for the first time in this Court. The result is, the appeals are dismissed with costs--one set B of hearing fee. Appeals dismissed. '
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