Appeal No 1330 Of 1966
Appeal from the judgment and order dated August 4 7 1964 of the Bombay High Court in Appeal No 65 of 1962
KS Shavaksha RA Shah JB Dadachanji and Bhuvanesh Kumari for the appellant
MC Chagla 1
M Chagla
Anoop Singh MN Shroff for 1
N Shroff for the respondent
The Judgment of the Court was delivered by Ramaswami J
This appeal is brought by certificate from the judgment of the Bombay High Court dated August 17 1964 in application No 65 of 1962 upholding in part the judgment of Mr Justice Tarkunde dated December 7 1962 in Miscellaneous Petition No 358 of 1961
The appellant is a limited liability company incorporated under the laws of Switzerland and carries on business in the manufacture and sale of pharmaceutical and chemical products
The respondent is a company incorporated under the Companies Act in India and also carries on business in the manufacture and sale of pharmaceutical products
On December 2 1946 the appellant applied for registration of its trade mark PROTOVIT
The application Was granted and the appellants mark was registered in Class V in respect of 215 Pharmaceutical preparations for human use and for veterinary use infants  and invalids  foods
The appellant thereafter used that mark on multi vitamin preparations in liquid tablet forms and its goods are being sold under that mark at least since the year 1951
On January 28 1957 the respondent applied for registration of its mark DROPOVIT in respect of medicinal and pharmaceutical preparations and substances
The application was registered but the advertisement of the respondent s application escaped the notice of the appellant who did not hence oppose the registration
By a letter dated March 4 1958 Messrs Voltas Ltd the appellant s agents drew the attention of the appellant to the respondent s mark DROPOVIT
There was negotiation between the parties but on March 19 1958 the respondents wrote to the appellant refusing to alter its trade mark
On January 21 1959 the appellant applied for rectification of the Register by removal therefrom of the respondent s trade mark
The ground urged in support of the application was that the respondent s mark so nearly resembled the appellant s mark as to
be likely to deceive or cause confusion
On March 9 1960 the appellant applied for amendment of the application and an additional ground was taken that DROPOVIT was not an invented word
The application for amendment was allowed by the Registrar
The amended application was opposed by the respondent
By his judgment dated August 5 1961 the Joint Registrar rejected the application for rectification holding that DROPOVIT was not deceptively similar to PROTOVIT and that the word DROPOVIT considered as a whole was not descriptive
The appellant took the matter in appeal to the Bombay High Court
On December 7 1962 Mr Justice Tarkunde dismissed the appeal
The appellant preferred an appeal under Letters Patent but the appeal was dismissed by a Division Bench consisting of Chief Justice Chainani and Mody J on August 17 1964
During the hearing of
the appeal the respondent restricted the designation of goods to  medicinal and pharmaceutical preparations and substances containing principally vitamins
The application for rectification  was made on January 21 1959 beore the Act No 43 of 1958 came into operation
But it is not disputed that under section 1363 of this Act the decision of this case is governed by the provisions of Act No 43 of 1958 hereinafter called the Act
Section 11 of the Act states A mark a the use of which would be likely to deceive or cause confusion or 216 bthe use Of WhiCh would be contrary to any law for the time being in force or c which comprises or contains scandalous or obscene matter or d which comprises orcontains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India or 
e which wouldotherwise be disentitled to protection in a court shall not be registered as a trade mark
Section 12 1  provides Save as provided in sub section 3  no trade mark
shall be registered in respect
of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods
or descriptive of goods
 Section 561 reads On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention or failure to observe a condition entered on the register in relation thereto Section 21d defines the phrase deceptively similar as follows A mark shall be deemed to
be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion The first question to be considered in this appeal is whether the word DROPOVIT is deceptively similar to the word PROTOVIT and offends the provision of section 12 1  of the Act
In other words the question is whether the respondent s mark so nearly resembles the registered mark aS to be likely to deceive or cause confusion
 It is not necessary that it should be intended to deceive or intended to cause  confusion
It is its probable effect on the ordinary kind of customers that one has to consider
217 In Parker Knoll Ltd vs Knoll International Ltd 1 Lord Denning explained the words to deceive  and the phrase to cause confusion as follows 1 
Secondly to deceive  is one thing
To Cause confusion  is another
The difference is this When you deceive a man you tell him a lie
You make a false representation to him and thereby cause him to believe a thing to be true
which is false
You may not do it knowingly or intentionally but still you do it and so you deceive him
But you may cause confusion without telling him a lie at all and without making any false representation to him
You may indeed tell him the truth the whole truth and nothing but the truth but still you may cause confusion in his mind not by any fault of yours but because he has not the knowledge or ability to
distinguish it from the other pieces of truth known to him
or because he may not even take the trouble to do so
 The tests for comparison of the two word marks were formulated by Lord Parker in Pionotist Co Ltd s application2 as follows You must take the two words
You must judge of 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 fact you must  consider all the surrounding circumstances and  you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks
If considering all those circumstances you come to the conclusion that there will be a confusion that is to say not necessarily that one man will be injured and the other will gain illicit benefit but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration or rather you must refuse the registration in that case
 It is necessary to apply both the visual and phonetic tests
In Aristoc Ltd vs Rysta Ltda the House of Lords was considering the resemblance between the two words Aristoc and Rysta
The view taken was that considering the way the words were pronounced in English the one was likely to be mistaken for the other
1 at 274 2 at 777 3 at 72
218 Viscount Maugham cited the following passage of
Lord Justice Luxmoore in
the Court of Appeal which passage he said he completely accepted as the correct exposition of the law 
The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act 1938 must nearly always depend on first impression for obviously a person who is familiar with both words will neither be deceived nor confused It is the person who only knows
the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused
Little assistance therefore is to be obtained from a meticulous comparison of the two words letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution
The Court must be careful to
make  allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to
buy under the trade description but also of the shop
assistant ministering to that person s wants
It is also important that the marks must be compared as wholes
It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion
The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark
Thus in Layroma case1
Lord Johnston said      we are not bound to scan the words as we would in a question of comparatio literarum
It is not a matter for microscopic inspection but to be taken from the general and even casual point of view of a customer walking into a shop
 In order to decide whether the word DIROPOVIT is deceptively similar to the word PROTOVIT each of the two words must therefore be taken as a whole word
Each of the two words consists of eight letters the last three letters are common and in the uncommon part the first two are consonants the next is the same vowel 0  the next is a consonant and the fifth is again a common vowel 0 
The combined effect is to produce an alliteration
The affidavits of the appellant indicate that the last three letters VIT is a well known common abbreviation used in the pharmaceutical trade to denote Vitamin preparations
1 Tokajon Ltd vs Davidson  Co at 136
219 his affidavit dated January 11 1961 Frank Murdoch has referred to the existence on the Register of about 57 trade marks which have the common suffix VIT indicating that the goods are vitamin preparationS
It is apparent that the terminal syllable VIT in the two marks is both descriptive and common to the trade
If greater regard is paid to the uncommon element in these two words it is difficult to hold that one will be mistaken for or confused with the other
The letters D  and P  in DROPOVIT and the corresponding letters P  and T  in PROTOVIT cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view
In the High Court counsel for the respondent made a statement that the respondent was willing that the Court should direct in exercise of its powers under section 562 that the Registrar should limit the respondent s trade mark DROPOVIT to medicinal and pharmaceutical preparations and substances containing principally vitamins and that the appeal should be decided on this basis
The question of deceptive similarity must therefore be decided on the basis of the class of goods to which the two trade marks apply subject to the limitation agreed to by the respondent
From the nature of the goods it is likely that most of the customers would obtain a prescription
from a doctor and show it to the chemist before the purchase
In such a case except in the event of the handwriting of the doctor being very bad or illegible the chance of confusion is remote
As we have already observed the evidence shows that there are as many as 57 trade marks in the Register of Trade Marks with the suffix VIT
Therefore even an average customer would know that in respect of Vitamin preparations the word VIT occurs in large number of trade marks and because of this he would naturally be on his guard and  take special care against making a mistake
In this connection the provisions of the Drug Rules 1945 are also relevant
Under r 612 vitamin preparations would be covered by item 5 in Schedule C  1  to the Rules and a licence would be required to stock such vitamin preparations and to sell them retail
The question of confusion must hence be determined on the basis that the goods with one of the two rival trade marks would be sold only by such a licensed dealer and would not be available in any other shop
The fact that the vendor would be a licensed dealer also reduces the possibility of confusion to a considerable extent
Having taken into account all circumstances of the present case we are of the opinion that the High Court and the Joint Registrar of Trade Marks were right in holding that there was no real tangible danger of confusion if respondent s trade mark 220 was allowed to continue to remain on the Register and the application  for rectification made by the appellant should be dismissed
The question was also
argued in the appeal whether the word DROPOVIT was not an invented word and whether it was a descriptive WOrd
Section 91  of the Act states 
A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one the following essential particulars namely c one or more invented words d one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect caste or tribe in India It is contended on behalf of the appellant that DROPOVIT meant only DROP OF VITAMIN with the word of  being mis spelled as O  VIT  being used to denote Vitamins and the three separate words are joined together to make DROPOVIT as one word  It was said that the word DROPOVIT was simply a combination of three common words in English language and cannot therefore be said to
be an invented word
In Diabolo case1 Parker J has explained the meaning of invented word as follows To be an invented word within the meaning of the Act a word must not only be newly coined in the sense of not being already current in the English language but must be such as not to convey an 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 been assigned to it
 In the case of De Cordova and others vs Vick Chemical Co2 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  knowing 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 to draw the inference that the word 1 2 221 DROPOVIT did not strike even Messrs Depenning and DePenning the legal advisers of the appellant as being descriptive
It was also pointed out that in his judgment Mr Justice Tarkunde 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
We see no reason therefore to differ from the reasoning of the High Court on this aspect of the case
If the word DROPOVIT is not a descriptive word it must 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 knowing English
But the resulting combination produces a new word a newly coined word which does not remind an ordinary person knowing English of the original 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 and 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
GC Appeal dismissed


Summary:
In 1946 the trade mark PROTOVIT  was registered for one of the vitamin preparations manufactured 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 s application for rectification
The appellant went in appeal to the Bombay High Court
During the hearing of the appeal the respondent restricted the designation of goods covered by the mark DROPOVIT  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 section 121 of the Trade and Merchandise Act 1958 ii whether the word DROPOVIT  was an invented or a descriptive word for the purpose of section 91 of the Act
HELD The appeal must be dismissed
i In order that a trade mark may be found deceptively similar to another it is not necessary that it should be intended to deceive or intended to cause confusion
It is its probable effect on the ordinary kind of customers that one has to consider
For this purpose it is necessary to apply both the visual and phonetic tests
It is also important that the marks should be compared as wholes
It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion
The true test is whether the totality of the trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the persons accustomed to the existing trade mark
216 H 217 G H 218 E Parker Knoll Ltd vs Knoll International Ltd at 274 Pianotist Co Ltd s application  777 Aristoc Ltd vs Rysta Ltd at 72 and Toklon Ltd vs Davidson  Co at 136 applied
The terminal syllable VIT  in the two marks DROPOVIT  and PROTOVIT  was both descriptive and as the evidence showed
common to the trade
If greater regard was paid to the uncommon ejement in Jp CI70 2 214 the two words it was difficult to hold that one would be mistaken for or confused with the other
The letters D  and P  in DROPOVIT  and
the corresponding letters P  and T  in PROTOVIT  could not possibly be slurred over in pronunciation and the words were so dissimilar that there was no reasonable probability of confusion between the words either from the visual or phonetic point of view
This was all the more so because the preparations from their very nature were likely to be purchased on the prescription of doctors and under r 612 of Drug Rules 1945 could be sold only by licensed  dealers SO that the possibility of confusion would be reduced to a considerable extent
219 A C E ii It could not be accepted that the Word DROPOVIT  would strike an ordinary person knowing English as meaning DROP OF VITAMINS 
The appellant s original application for rectification did not contain the ground that the word DROPOVIT  was descriptive
It was therefore reasonable to presume that it did not strike even the legal advisers of the appellant as descriptive
It was true that the word DROPOVIT  was coined out of words commonly used by and known to ordinary persons knowing English
But the resulting combination produced a new word a newly coined word which did not remind an ordinary person knowing English of the original words out of which it was coined unless he was so told or unless at least he devoted some thought to it
It followed that the word DROPOVIT  being an invented word was entitled to be registered as a trade mark and was not liable to be removed from the Register on which it already existed
220 H 221 D