Appeals No 522 and 523 of 1962
Appeals by special leave from the judgment and order dated November 30 1960 of the Kerala High Court in A section No 233 of 1959 and OP No 19 of 1952
CB Agarwala N K Anand and J B Dadachanji for the appellant in both the appeals
GS Pathak and Sardar Bahadur for the respondent in both the appeals
739 The Judgment of the Court was delivered by Ayyangar J
These two appeals by special leave are con cerned with the validity of the respondent firm s claim as the registered proprietor of a Trade Mark Navaratna Pharmaceutical Laboratories  used by it on its medicinal preparations
The two appeals arise out of different proceedings but before narrating their history it would be convenient to briefly set out the facts upon which the claim of the respondent to the exclusive use of this Trade Mark is based
The respondent as stated already is a firm and it carries on business at Ernakulam in the same name and style as the Trade Mark now in controversy Navaratna Pharmaceutical Laboratories
As its name indicates the firm manufactures medicinal products
The business of the firm was founded sometime in 1926 by one Dr Sarvothama Rao who is now no more
When started the business was called Navaratna Pharmacy  but from January 1945 the name of the business was changed to the present one Navaratna Pharmaceutical Laboratories
From the very beginning the proprietors used the Trade Mark Navaratna on the products which they manufactured and sold
In December 1928 the word Navaratna  and the name Navaratna Pharmacy  as connoting the products of the respondent firm were registered by a declaration of ownership before the Registrar of Assurances Calcutta
When a legislation substantially similar to the Indian was enacted in the State of Cochin Vide the Cochin 19 of 1199 1944 the respondent firm registered the word Navarama  as a Trade Mark in respect of its medicinal preparations on January 31 1947 and another mark consisting of the words Navaratna Pharmaceutical Laboratories  to denote the same products on February 17 1948
There is evidence that the respondent firm has been having an expanding business in the products which it manufactures and has been selling the same under the above and other cognate names and this has continued ever since
The Trade Marks Amendment Act 1946 Act 12 of 1946 inserted section 82 A in the of 1940 and under this provision the Central Government was empowered to enter into reciprocal arrangements with Indian States for mutual recognition of TradeMarks registered in the other territory
There was a similar provision in section 78 A of the Cochin Act and availing itself of this provision the respondent firm applied for the registration of the words Navaratna Pharmaceutical Laboratories  in the Trade spp65 4 740 Marks Registry at Bombay
The application was advertised and no opposition having been entered the Trade Mark was registered
Pausing here certain facts have to be set out in relation to the appellant since they are material for understanding the Origin Of the proceedings which have given rise to these appeals
The appellant has for some Years Past been carrying on business in the preparation of Ayurvedic Pharmaceutical Products at Jullundur City in East punjab under the name of the Navaratna Kalpa Pharmacy  and had been vending the medicines Prepared by him under the name Navaratna Kalpa while so in October 1946 The applied for the registration of the Words NaVaratna Kalpa as a Trade Mark for his medicinal preparations
This application was advertised in April 1950 and the respondent firm opposed the application for registration on the ground that the word Navaratna was descriptive and having no distinctiveness could not be registered
This objection prevailed and the registration was refused
This led to the proceedings which have culminated in these appeals
In the first instance the appellant moved the Registrar Of Trade Marks for removing from the register the trade mark Navaratna and the word Navarama in the Other mark of the respondent
By this date however the respondent had filed wit No 233 of 1951 from which CA No 522 of 1962 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 Navaratne or any similar word etc
By reason of the pendency of this proceeding in which the validity of the registration of the respondent s mark was directly involved the Registrar refused his application and directed the appellant to move the High Court within whose jurisdiction the District Court was situated for the rectification of the register by deleting the respondent s mark
The appellant accordingly Mod OP No 19 of 1952 in the High Court of Travancore Cochin praying that the registration of the word  Navaratna 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 of the order of the High Court on this petition
This original petition No 19 of 1952 was kept pending in the High Court after it was ready for hearing and was heard along with the appeal against the decree of the District Judge in Original Suit No 233 of 1951
741 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 Navaratna and Navaratna Pharmaceutical Laboratories had an exclusive right to the use of those marks for his medicinal 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 allegation that by use of these marks the defendant was passing off his goods as those of the plaintiff
By his written statement the defendant raised principally three points 1aThat the word Navaratna in its etymo logical sense meant Ayurvedic preparations of a particular composition 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 no exclusive title to the use of that word which was a common word for the description of the product as a trade mark to designate its pharmaceutical preparations
1b As regards the trade mark Navaratna Pharmaceutical Laboratories which was in fact the name in which the plain tiff carried on its business the defence was that the crucial integer in that mark was the expression Navaratna and that if the plaintiff was not entitled to the exclusive use of the word Navaratna to designate its products the combination of the word with the two other words Pharmaceutical and Laboratories which were ordinary English words descriptive of the place where medicines were prepared could not render the trade mark a registerable one
For them two reasons the defence was that no claim could be made to relief under section 21 of the2Next it was submitted that even on the basis that the plaintiff was entitled to the use of the word Navaratna  either alone or in the combination Navaratna Pharmaceutical Laboratories still the use of the trade mark by the defendant of the words Navaratna Kalpa and Navaratna Kalpa Pharmacy were not 742 either identical with nor deceptively similar to the plaintiffs marks and therefore he was not guilty of any infringement
3As regards the claim for relief on the basis of passing off the defendant laid stress upon the packing get up and the manner in which the trade origin of the goods was clearly brought out in the packages in which his preparations were marketed and it was submitted that they clearly negatived any possibility of passing off
Appropriate issues were raised based on the pleadings and the contentions just now indicated and the learned District Judge found 1 that having regard to the method of packing adopted and theother features of the get up etc on which the defence had reliedthe defendant was not guilty of passing off 2 that the word Navaratna was a common word in Ayurvedic phraseology and consequently the plaintiff could not claim any exclusive title to the use of that word by reason of his having used it for his products even though this had been for a number of years
To reach this finding the learned District Judge pointed out that it was brought to his notice that there were several concerns manufacturing and vending Ayurvedic preparations which had for a very long time past either used marks which included that word and had described their products by calling them Navaratna either alone or in combination with other words
The right of the plaintiff to relief on the ground of the infringement of the mark Navaratna  was therefore disallowed
Dealing next with the question as to whether the mark Navaratna Pharmaceutical Laboratories could be validly registered and rights claimed for such a registration the learned Judge answered it in the affirmative pointing out that no evidence was placed before the Court of the use by any other person firm or concern of that name and that there was evidence which was uncontradicted that trade name Navaratna Pharmaceutical Laboratories or some variant of the same had been used as a trade mark by the plaintiff for a very long time and had come in the market to denote exclusively the goods of the plaintiff
The learned District Judge further held the mark Navaratna Pharmaceutical Laboratories or its permissible variants had been used long before February 25 1937 and having acquired factual distinctiveness was registerable under the proviso to section 63 of the Act
The plaintiff was therefore granted a decree for an injunction confined to the trade mark Navaratna Pharmaceutical Laboratories
743 From this judgment the appellant filed an appeal to the High Court and the learned Judges heard the appeal along with the Original Petition under section 46 of the Act filed by the appellant
By a common judgment the learned Judges confirmed all the findings and the decree of the learned District Judge and made an order in the Original Petition conformably to this decision
These two appeals have been preferred by the appellant after obtaining special leave from this Court in these two matters respectively
The first submission of Mr Agarwala learned Counsel for the appellant was that the judgment of the High Court holding the respondent s claim to the trade mark Navaratna Pharmaceutical Laboratories as a validly registered mark was really inconsistent with their finding that Navaratna which was the crucial and important word in that trade mark was a descriptive word in regard to which the respondent could obtain no exclusive right by any amount of user
His further submission was that if he was right in this the addition of the words Pharmaceutical and Laboratories which were common English words of ordinary use to designate the place where pharmaceutical products are manufactured were on the terms of section 6 of the and even otherwise incapable of acquiring distinctness by mere user
He therefore submitted that the plaintiff had no exclusive right to the use of the mark as a registered trade mark and that consequently his claim for the relief of perpetual injunction Under section 21 of the was not sustainable
For this purpose learned Counsel relied on the provisions of section 6 of the which provided the positive qualifications for registrability of trade mark on the relevant date That section runs 61 A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars namely a the name of a company individual or firm represented in a special or particular manner b the signature of the applicant for registration or some predecessor in his business 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 significa 744 tion a geographical name or surname or the name of a sect caste or tribe in India e any other distinctive mark provided that a name signature or any word other than such as fall within the description in the above clauses shall not be registerable except upon evidence of its distinctiveness
2For the purposes of this section the expression distinctive  means adapted in relation to the goods in respect of which a trade mark is proposed to be registered to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or where the trade mark is proposed to be registered subject to limitations in relation to use within the extent of the registration
3in determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which a the trade mark is inherently so adapted to distinguish and b by reason of the use of the trade mark or of any other circumstances the trade mark is in fact so adapted to distinguish  Provided that in the case of a trade mark which has been continuously used either by the applicant for the registration or by some predecessor in his business and either in its original form or with additions or alterations not substantially affecting its identity in relation to which registration is applied for during a period from a date prior to the 25th day of February 1937 to the date of application for registration the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid and may accept evidence of acquired distinctiveness as entitling the trade mark to registration
 The learned Counsel particularly stressed clause d of sub section 1 which excluded words having direct reference to the character or quality of the goods from being treated as distinctive and thus qualifying for registrability Me word Navaratna  having been held to be not distinctive and indeed incapable of becoming 745 distinctive by reason of its being merely the Sanskrit word for describing Ayurvedic preparations of a particular composition he submitted that the words Pharmaceutical  and Laboratories  could neither by themselves nor in combination with it confer upon that word the quality of distinctiveness having regard to their ordinary descriptive signification
If the matter had to be decided in terms of section 61 alone without reference to the terms of the proviso to sub section3 to which we shall advert presently we see great force in the submission of the learned Counsel
As Pry L J said in  Dunn1 with reference to the cor responding law in UK which has been reproduced by section 6 of the Indian Act It is said that the words Fruit Salt  have never been used in collocation except by Mr Eno
Be it so  
I cannot help regarding the attempt on Mr Eno s part as an instance of that perpetual struggle which it seems to me is going on to enclose and to appropriate as private property certain little strips of the great open common of the English language Mat is a kind of trespass against which I think the courts ought to set their faces
 There can be no dispute either that the words pharmaceutical Laboratories used in relation to medicinal preparations have a direct reference to the character of the goods
Speaking of the mark Torq set in respect of screws bolts rivets and studs and fastening devices Lloyd Jacob observed 2 Direct reference corresponds in effect to aptness for normal description
Judged by this test it could not be seriously contended that the prohibition in section 6 1 d would be attracted to this mark
In the present case the words Pharmaceutical  and Laboratories  would have a direct reference to the character of the goods since the trade marks to which it is claimed to attach them are medicinal or pharmaceutical products
In this connection reference may also be made to a decision of the House of Lords to which Mr Agarwala drew our attention
Yorkshire Copper Works Limited s Application for a Trade Mark8 Yorkshire Copper Works Ltd vs Registrar of Trade Marks4 was an appeal from 1 at 3862 In the matter of American Screw Co s applnat 346 3 4 1952 69 RPC 207 746 the Court of appeal affirming the decision of the Divisional Court which rejected an appeal against an order of the Registrar refusing to register the Trade Mark Yorkshire for solid drawn tubes and capillary fittings all made of copper or non ferrous copper alloys
The refusal to register was on the ground of the word being geographical and so being disqualified for registration under a provision of the UK of 1938 identical in terms with section 6 1  d of the Act
The applicants led evidence to establish and claimed that they had established that everyone concerned in the trade in copper tubes understood Yorkshire Tubes as meaning the products of the applicant
It was therefore contended that the word Yorkshire  had lost its primary geographical significance and had become 100 distinctive of the applicant s goods
In dismissing the appeal Lord Simonds Lord Chancellor observed I am content to accept the statement reiterated by their learned Counsel that the mark had acquired 100 per cent distinctiveness
In spite of this fact the Registrar refused registration and has been upheld in his refusal by Lloyd Jacob J and the unanimous opinion of the Court of Appeal 
Here I must express my emphatic dissent from the proposition which was strenuously urged by Counsel for the Appel lants that distinctiveness in fact is conclusive at any rate if there is what he called 100 per cent distinctiveness
In my opinion the decisions of this House in the W  G case and the Glastonbury case are fatal to this proposition and I am content to accept as accurate the clear exposition of those cases given by the learned Master of the Rolls in the present case
He took the view which I share that the Court of Appeal had in the Liverpool Cable case rightly interpreted the opinion of Lord Parker in the W  G case and that this House in its turn in the Glastonbury case endorsed that interpretation
Accepting that view of the law which indeed if the matter were res integral I should not hesitate to commend to your Lordships I do not see how the Registrar could have come to any other conclusion
Unless having found distinctiveness in fact he needed to pay no regard to the other factor of inherent adaptability he was faced by the fact that there could not well be a geographical name less inherently adapted than Yorkshire to distinguish the 747 goods of the Appellants
I do not propose to try to define this expression
But I would say that paradoxically perhaps the more apt a word is to describe the goods of a manufacturer the less apt it is to dis tinguish them for a word that is apt to describe the goods of A is likely to be apt to describe the similar goods of B
It is I think for this very reason that a geographical name in prima facie denied registrability
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
Of course where the geographical area is very small there is a possibility of the inherent incapabilityto attain distinctiveness becoming attenuated but we do not go into these details as they are unnecessary for our present purpose
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 61 the appellants submissions as regards the non registrability of the respondent s mark would have great force
That however is not the position here
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 been affirmed by the learned Judges of the High Court
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 61 as explained by sub sections2  3 of that section still it was registrable as a Trade Mark by virtue of the proviso to section 63 of the Act
We do not find any error in the approach of the learned District Judge to this question
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
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
Thus the finding was that by reputation the mark had come to denote the goods of the
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
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
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
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 Counsel for the appellant did not attempt to do so
What he however submitted was that on a proper construction of the proviso to section 63 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 descriptive of the goods were inherently incapable of registration to be registrable
This takes us to the consideration of the proper construction of the proviso
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 61 as explained by sub section2 and the main part of sub section3 in other words the submission was that in cases where the mark fell within the prohibition of cld of sub section1 it could not qualify for registration on the basis of acquired distinctiveness by long user as an old mark ie from before February 25 1937
In support of this submission the learned Counsel relied on the view expressed by Mr section Venkateswaran in his comments on section 63 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 India Electric Works Ltd1 1 749 Before proceeding further we should add what there is a decision of the Allahabad High Court in Ram Rekhpal vs Amrit Dhara Pharmacy1 in which the question of the construction of the proviso came up for consideration
The learned Judges however without any discussion of the points involved expressed their opinion that even if the mark came within the prohibition in cld of sub section1 of section 6 an old mark ie marks in use from before February 25 1937 would qualify for registration if there was evidence of factual a distinctiveness
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 section Venkateswaraies treatise which learned Counsel adopted  as part of his argument
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
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
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 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 trade mark has a direct reference to the character or quality of the goods or is otherwise not qualified for registration under cld of sub section
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 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 section3 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 dis tinctiveness had to be understood in the sense in which it is defined in sub section2 where it is stated to mean practically  adapted to distinguish the content and the significance of which is elaborated in sub section
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 sections2 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 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 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  by 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 section2 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 toaccept this construction nor do we read the opening words ofsub section2 as necessarily leading to this result
Briefly stateddistinctive is defined in sub section2 as adapted to distinguish and the latter phrase explained in language which might exclude what is negatived by section 6 1  d
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
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 61 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 section 61 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 function 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 elsewhere
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
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 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
2Nothing 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 section 63 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
This was 752 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 quality for registration under the proviso to section 63 by not having acquired that degree of factual distinctiveness which the Registrar considers is sufficient to enable it to qualify for registration
It is therefore possible to conceive of cases where even if the proviso to section 63 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
That in our opinion is the true ratio of the decision of McNair J in India Electric Works Ltd1 on which Mr Agarwala relied in this connection
The Court was there concerned with an appeal from an order of the Registrar refusing registration in respect of an old mark
The mark in question was the word India  as applied to electric fans
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
The learned Judge also considered whether the mark could qualify for registration under the proviso
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
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
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
That case therefore does not assist the learned Counsel for the construction that he seeks to put on the proviso to section 63
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
The finding is not capable of being challenged before us and was not in fact attempted to be challenged
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
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
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
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
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
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 on the register under section 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 rejected
As regards the first contention regarding disclaimer and the reference to section 13 the matter stands thus
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
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
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 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 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
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 manufacture 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 section 21 of the Act
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
No doubt where the evidence in respect of passing 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 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
But there the correspondence 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 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 imitation no further evidence is required to establish that the plaintiff s rights are violated
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 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 distinguish his goods from those of the plaintiff
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
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 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
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 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 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 represented by the plaintiffs 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 p65 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
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
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
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 appellant had used a trade mark which was deceptively similar to that of the respondent
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
In these circumstances the trade mark to be compared with that used by the appellant is the entire registered mark including the word Navaratna 
Even otherwise as stated in a slightly different context1 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
It appears to us that the conclusion reached by the Courts below that the appellants mark is deceptively similar to that of the respondents cannot be stated to be erroneous
Besides this question of deceptive similarity is a question of fact unless the test employed for determining it suffers from error
In 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
See per Lord Watson in Attorney General for the Dominion of Canada vs Attorney General for Ontario etc 2 
As there are concurrent findings of fact on this matter we do not propose to enter into a discussion of this question de novo since we are satisfied that the conclusion reached is not unreasonable
Lastly it was submitted that this was a case of honest con current user within section 102 of the Act
This point was however not raised in any of the Courts 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 of hearing fee
Appeals dismissed


Summary:
The respondent a firm manufacturing medicinal products was the proprietor of two registered trade marks Navaratna and Navaratna pharmaceutical Laboratories  from a period prior to 25th February 1937
When the appellant who was also a manufacturer of medicinal preparations sought the registration of the words Navaratna Pharmacy as his trade mark the respondent objected successfully
The appellant then moved the Registrar of Trade Marks for removing from the register the trade mark Navaratna and for deleting the word Navaratna from the other trade mark of the respondent
The Registrar directed him to move the High Court for the rectification as the respondent had by that time filed a suit in the District Court for a permanent injunction restraining the appellant from selling any preparation under a mark containing the word Navaratna Me appellant accordingly filed an original petition in the High Court
The suit in the District Court was decreed in favour of the respondent with respect to the trade mark Navaratna Pharmaceutical Laboratories
 An appeal against the decree filed by the appellant and his Original Petition were heard together by the High Court and the decree of the District Court in favour of the respondent was confirmed
It was held that  i having regard to the method of packing adopted by the appellant he was 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 was a common word in Ayurvedik phraseology and used in connection with several medicinal preparations and iii the trade name Navaratna Pharmaceutical Laboratories had been use as a trade mark by the respon dent for a very long time and had come to denote exclusively his goods and that the trade mark having been in use from before the specified date February 25 1937 and having acquired factual distinctiveness was registerable under the proviso to section 63 of the 
In appeal to the Supreme Court it was contended that  i the decision of the High Court that the trade mark Navaratna Pharmaceutical Labradortories  was validly registerable was inconsistent with the finding that Navaratna which was the crucial word in the trade mark was only a descriptive word in regard to which the respondent could obtain no exclusive right and ii the finding that the marks of the appellant and respondent were deceptively similar was inconsistent with the finding that the packing in which the appellant s goods were marketed was 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 in section 61 of the Act could still qualify for registration by virtue of the proviso to section 63 by proof of acquired distinctiveness
Under the proviso with respect to marks in use from a date prior to 25th February 1937 the Registrar shall not refuse registra 738 tion by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid and may accept evidence of acquired distinctiveness as entitling the trade mark to registration
The word distinctiveness cannot mean adapted to distinguish for then the proviso would add nothing to the section and would make no variation in the law as between new marks and old marks which had been in use continuously from before the specified date
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 registration cannot be accepted
However a mark might have been used prior to the specified date but it might not qualify for registration under the proviso by not having acquired that degree of factual distinctiveness which the Registrar considers sufficient to enable it to qualify for registration
Therefore when the Registrar records a finding that the mark submitted for registration was not adapted to distinguish as aforesaid he was authorised to permit evidence being led as to acquired distinctiveness
Since both the trial court and the High Court found that through long user from 1926 onwards the mark of the respondent had become associated exclusively in the market with the pharmaceutical products manufactured by him it would follow that his mark was rightly registered and that he was entitled to protect an invasion of his rights by seeking a perpetual injunction against those who invaded them
744 G 750 A C E F 751 B D 752 A B G H 753 A iiIn an action for infringement of a trade mark the onus would be on the plaintiff to establish that the trade mark used by the defendant is deceptively similar
This has necessarily to be done by a comparison of the two marks the degree of resemblance necessary being incapable of defi nition by objective standards
Where the similarity between the plaintiff s and defendant s marks is so close either visually phonetically or otherwise and the Court reaches the conclusion that there is an invitation no further evidence is required to establish that the plaintiff s rights are violated
The fact that the get us packing etc showed marked differences or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial
A finding regarding the packing is relevant with respect to the relief on the ground of passing off but plays 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 a statutory remedy under section 21 for vindication of his exclusive right to use it
The question of deceptive similarity is one of fact unless the test employed suffers from error this court would not interfere
In the instant case there being no such error the conclusion reached by both the lower courts that the appellant s mark was deceptively similar to that of the respondent cannot be interfered with
754 D F 755 A C F G 756 F H