Case Note & Summary
The dispute involved a trade mark rectification proceeding under the Trade and Merchandise Marks Act, 1958, between F. Hoffmann-La Roche & Co. Ltd., a Swiss pharmaceutical company, and Geoffrey Manners & Co. Pvt. Ltd., an Indian pharmaceutical company. Hoffmann-La Roche held a registration for the mark 'PROTOVIT' since 1946 for vitamin preparations. In 1957, Geoffrey Manners registered the mark 'DROPOVIT' for medicinal and pharmaceutical preparations without opposition from Hoffmann-La Roche. After discovering the registration in 1958 and failing to negotiate an alteration, Hoffmann-La Roche filed for rectification in January 1959, seeking removal of 'DROPOVIT' on the ground of deceptive similarity with 'PROTOVIT'. In March 1960, it amended the application to assert that 'DROPOVIT' was not an invented word. The Joint Registrar of Trade Marks rejected the rectification in August 1961, and subsequent appeals to a Single Judge and a Division Bench of the Bombay High Court were dismissed. During the proceedings, Geoffrey Manners restricted its goods to ‘medicinal and pharmaceutical preparations and substances containing principally vitamins’. The matter reached the Supreme Court under a certificate of appeal. The legal issues were: (i) whether 'DROPOVIT' was deceptively similar to 'PROTOVIT' under Section 12(1); and (ii) whether 'DROPOVIT' was an invented word under Section 9(1) of the Act. Hoffmann-La Roche argued that the marks were confusingly similar visually and phonetically, and that 'DROPOVIT' was descriptive of a drop of vitamins. Geoffrey Manners contended that the prefixes were distinct, the suffix 'VIT' was common to the trade and descriptive, and that 'DROPOVIT' was an invented word. The Court, citing English precedents, held that the test for deceptive similarity requires comparing the marks as wholes, considering both visual and phonetic aspects, and the nature of the goods and likely customers. It found that the uncommon elements 'DR' and 'P' in 'DROPOVIT' and 'PR' and 'T' in 'PROTOVIT' were sufficiently distinct, and that the terminal 'VIT' was descriptive and common to the trade. The Court also noted that the goods were pharmaceutical preparations typically sold on prescription by licensed dealers, which reduced the likelihood of confusion. On the issue of invented word, the Court held that though 'DROPOVIT' was coined from common English words, the combination resulted in a new word that would not immediately suggest 'drop of vitamins' to an ordinary person, and thus it qualified as an invented word under Section 9(1). Accordingly, the appeal was dismissed, and the registration of 'DROPOVIT' was upheld.
Headnote
A) Trade Marks - Deceptive Similarity - Tests for Comparison - Trade and Merchandise Marks Act, 1958, Sections 2(1)(d), 12(1) - To determine deceptive similarity, the court must consider the probable effect on the ordinary kind of customers, apply both visual and phonetic tests, and compare the marks as wholes. It is not right to take a portion of the word and say that because that portion differs there is no similarity; the true test is whether the totality is likely to cause deception or confusion. Held that 'DROPOVIT' and 'PROTOVIT' are not deceptively similar because the uncommon elements are prominent, the terminal 'VIT' is descriptive and common to the trade, and the nature of the goods reduces confusion. B) Trade Marks - Deceptive Similarity - Meaning of 'Deceive' and 'Confuse' - Trade and Merchandise Marks Act, 1958, Section 12(1) - 'To deceive' means making a false representation leading to a false belief, while 'to cause confusion' may occur without any false representation, simply due to the customer's lack of knowledge or ability to distinguish. The test is objective, focusing on the likelihood of confusion in the mind of the public, not the intent to deceive. C) Trade Marks - Deceptive Similarity - Relevance of Nature of Goods and Customer Class - Trade and Merchandise Marks Act, 1958, Section 12(1) - In assessing likelihood of confusion, the court must consider the nature of the goods and the kind of customers likely to purchase them. Where the goods are pharmaceutical preparations sold on prescription and by licensed dealers under Rule 61(2) of Drug Rules, 1945, the possibility of confusion is considerably reduced. D) Trade Marks - Invented Word - Criteria for Invented Word - Trade and Merchandise Marks Act, 1958, Section 9(1) - A trade mark is an invented word if the combination produces a new word that does not immediately remind an ordinary person of the common words from which it is coined, unless pointed out or upon reflection. Held that 'DROPOVIT' is an invented word because an ordinary person would not perceive it as meaning 'drop of vitamins' without effort; thus, it was entitled to registration and not liable to be removed.
Issue of Consideration
(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.
Final Decision
The Supreme Court dismissed the appeal and upheld the registration of the respondent's trade mark 'DROPOVIT', holding that it was not deceptively similar to 'PROTOVIT' under Section 12(1) and that it was an invented word entitled to registration under Section 9(1) of the Trade and Merchandise Marks Act, 1958.
Law Points
- Legal points not extracted
- Test for deceptive similarity includes visual and phonetic comparison as a whole
- consideration of nature of goods and type of customers
- for an invented word
- the combination must produce a new word not immediately descriptive
- likelihood of confusion reduced when products sold on prescription and by licensed dealers.
