Appeal No 22 of 1960
Appeal by special leave from the judgment and order dated March 19 1958 of the Allahabad High Court in F A No 62 of 1954
section N Andley Rameshwar Nath and P L Vohra for the appellant
G section Pathak section K Kapur B N Kirpal and Ganpat Rai for the respondent
April 27
The Judgment of the Court was delivered by section K DAs J
This is an appeal by special leave granted by this Court on December 8 1958
On July 19 1950 Satya Deo Gupta respondent before us made an application under a 14 of the Act V of 1940 hereinafter referred to as the Act for registration of the trade name of a biochemical medicinal preparation commonly known as Laksbmandhara  in Class 5 of the Fourth Schedule to the Trade 486 Marks Rules 1942
The application was made by the respondent as the sole proprietor of Rup Bilas Company situate at Dhankutti in Kanpur
The averments made in the application were that the said medicinal preparation had been in use by the name of Lakshmandhara  since 1923 and was sold throughout the length and breadth of India as also in some foreign markets the mark or name Lakshmandhara  was said to be distinctive to the article and it was stated that the approximate annual turnover was Rs 40000 
Notice of the application was given by the Registrar of Trade Marks Bombay and the Amrit dhara Pharmacy a limited liability company and appellant before us filed an application in opposition
In this application the appellant stated that the word Amritdhara  was already registered as a trade name for the medicinal preparation of the appellant and that medicinal preparation was introduced in the market so far back as in the year 1901 on account of its great popularity many people advertised similar medicines with slight variations of name to pass off their goods as Amritdhara 
It was averred that the composite word Lakahmandhara  was used to denote the same medicine as Amrit dhara  and the single word dhara  it was stated was first used in conjunction with Amritdhara  to denote the medicine of the appellant and the medicine Lakahmandhara  being of the same nature and to quality could be easily passed off as Amritdhara  to the ultimate purchaser
The appellant contended that as Amritdhara  was already registered and Lakshmandhara  being a similar name was likely to receive the public registration should be refused
On behalf of the respondent a counter affidavit was made in which it was stated that Amritdhara  and Lakshinandhara  were two distinctly different names and no one could pass off one for the other
487 It was further stated that during the long period of introduction and sale of Lakshmandhara  since 1923 no objection was ever raised from any quarter from the appellant or anybody else to the use of the name Lakshmandhara 
It was denied by the respondent that the composite word Lakshmandhara  was likely to deceive the public or could by any stretch of imagination be taken or mistaken for Amritdhara 
The respondent further alleged that the single word dhara  had no particular significance in relation to the medicine nor did that word mean or convey any special or exclusive meaning or effect in relation to the medicine
It was also stated that apart from the difference in name the phial label and packing of Lakshmandhara  had exclusive designs of their own and were not likely to be confused with any other medicine of similar nature least of all with Amritdhara  whose packing was distinctly different in colour design and layout
The Registrar of Trade Marks dealt with the application and the opposition thereto by his order dated September 10 1953
It appears that apart from the affidavits filed no other evidence was led on behalf of either party but certified copies of certain decisions in earlier cases to which the respondent was not however a party given in favour of the appellant in support of its claim of infringement of its registered trade mark Amritdhara  were filed
A list of such cases has been printed as annexure A 
These cases showed that a number of medicines with the word Amrit  or dhara  as part of their names had been introduced in the market since 1947 and the appellant successfully took action against them for infringement of its trade mark
Even in the Trade Marks Registry the appellant successfully opposed the introduction of names which contained the word dhara  as part of thetrade name
A question has 488 been raised before us whether the Registrar of Trade Marks was justified in taking into consideration the decisions in those cases
To that question we shall advert later
The Registrar found that in 1901 Pandit Thakur Datta Sharma commenced to do business at Lahore in a particular ayurvedic medicine which was meant for alleviation for of headaches diarrohea constipation and other complaints
This medicine was first sold under the mark Amrit Ki Dhara  but in 1903 the name was changed to Amritdhara  Pandit Thakur Datta Sharma formed a limited liability company in 1942 and the name Amritdhara  became a well known popular name for the medicine
The sale of the medicine went up to about Re 4 lacs a year
The business was done in Lahore but when partition came in 1947 the appellant established its business in Dehradun
The Registrar expressed the view that if the matter had rested on section 8 and section 101 of the Act he world have no hesitation in allowing the opposition and dismissing the application
This could only mean that the Registrar was of the view that the name Lakshmandhara  so nearly resembled the trade mark Amritdhara  that it was likely to deceive the public or cause confusion to the trade
We are saying this because the High Court through that the Registrar did not express his own opinion whether the name Lakshmandhara  was likely to cause deception to the public or confusion to the  trade
The respondent however relied also on two other circumstances viz a honest concurrent user of the name Lakshmandhara  since 1923 and b acquiescence on the part of the appellant in the user of the name Lakshmandhara 
The respondent contended that these two circumstances brought the case With in the meaning of special circumstances  in A 102 of the Act which permitted the registration by more than one Proprietor of trade marks which are identical or 489 nearly resemble each other subject to such condition and limitations if any as the Registrar might think fit to impose
On the point of honest concurrent user the Registrar found in favour of the appellant
As to acquiescence he however found in favour of the respondent and expressed his finding in these words
In the case before me it is not disputed that the applicant commenced his user in a small way in 1923 and it may even be said that up to about 1942 the applicant s user was insignificant
In paragraph 12 of the appli cant s affidavit dated the 30th March 1953 he has given details of advertisements in directories pamphlets newspapers etc
in which both the applicant s and the opponents  marks were advertised
The facts given in the affidavit go to show that from 1938 right up to the date of the applications by the applicant he has been advertising through mediums which were common to both the applicant and the opponents
Here we have a case in which Pandit Thakur Datta Sharma states that he had no notice of the applicant s mark
He has however admitted that he had about 12 persons in his factory which constituted the clerical staff and amongst them were persons who were in charge of advertising the opponents mark
It seems to me that the opponents and their agents were well aware of the advertisements by the applicant and did not raise any protest till the applicant s mark was advertised in the Trade Mark Journal
In other words the opponents stood by and allowed the applicant to develop his business and as I have shown from small beginning he began to sell these medicines to the extent of about Rs 43000 in 1949
In my opinion this is 490 acquiescence which would come under the phrase or other special circumstances  in section 102 of the and that appears to me to be fatal to the case of the opponents
 Before the Registrar it was admitted on behalf of the respondent that his goods were sold mainly in Uttar Pradesh and there were at the most only sporadic sales in other States
Taking that circumstance into consideration the Registrar passed an order allowing registration of Lakshmandhara  for sale in the State of Uttar Pradesh only
From the decision of the Registrar two appeals were referred to the High Court of Judicature at Allahabad under section 76 of the Act one appeal Was referred by the respondent and  the other by the appellant
The respondent complained of the registration being limited to Uttar Pradesh only and the appellant pleaded that registration should have been refused altogether The learned Judges of the High Court held that the words Amrit  and dhara  were common words in the Hindi language and the combined word Amritdhara  meant current of nectar  or the flow of nectar  the two words Lakshman  and dhara were also well known common words and combined together they meant current or flow of Lakshman 
The learned Judges then said There is no possibility of any Indian confusing the two ideas
Even phonetical differences are wide enough not to confuse anybody
The claim of the Amritdhara pharmacy that both the words Amrit and dhara  have become so associated with their goods that the use of each part separately or in any combination is  likely to mislead is an untenable claim
The whole phrase Amritdhara  had been registered and the Monopoly  has to be 491 confined only to the use of the whole word
The words of common language like Amrit  and dhara  cannot be made the monopoly of any individual
We therefore see no reason to disallow registration of the trade mark Lakshmandhara 
 As to honest concurrent user from 1923 to 1942 the learned Judges again held in favour of the respondent
But on the point acquiescence they held against the respondent and found in favour of the appellant
They said that from the fact that both the medicines were being advertised in the same journals or periodicals it did not following that the attention of the appellant was drawn to the use of the word Lakshmandhara  by the respondent
In view however of their finding that the two names were not likely to cause any confusion and that the  respondent had been an honest concurrent user from 1923 onwards they held that there was no justification for refusing registration to the trade mark Lakshmandhara  for the whole of India
They accordingly allowed the appeal of the respondent and dismissed that of the appellant by their judgment dated March 19 1958
The appellant then obtained special leave from this Court and the present appeal has been filed in pursuance of the leave granted by this court
Two points have been agitated before us
The first point is whether the name Lakshmandhara  was likely to deceive the public or cause confusion to trade within the meaning of section 8 and section 10 1 of the Act
The second point is whether there was Such acquiescence on behalf of the appellant in the use of the name Lakshmandhara  in the
State of Uttar Pradesh as to bring it within the expression special circumstances  mentioned in sub section
10 of the Act
We shall deal with these two points in the order in which we have stated them 492 We may first read the relevant sections of the Act vizs 8 and 10 8
Prohibition of registration of certain matter
No trade mark nor part of a trade mark shall be registered which consists of or contains any scandalous design or any matter the use of which would a by reason of its being likely to deceive or to cause confusion or otherwise be disentitled to protection in a Court of justice  or b be likely to hurt the religious susceptibilities of any class of the citizen of India or c be contrary to any law for the time being in force or to morality
Prohibition of registration of identical or similar trade mark 1 Save as provided in sub section 2 no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods or which so nearly resembles such trade mark as to be likely to deceive or cause confusion
2 In case of honest concurrent use or of other special circumstances which in the opinion of the Registrar make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods subject to such conditions and limitations if any as the Registrar may think fit to impose
3 493 It will be noticed that the words used in the sections and relevant for our purpose are likely to deceive or cause confusion
 The Act does not lay down any criteria for determining what is likely to deceive or cause confusion
Therefore every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion
On an application to register the Registrar or an opponent may object that the trade mark is not registerable by reason of cl
a of section 8 or sub section
1 of section 10 as in this case
In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause Confusion
In cases in which the tribunal considers that there is doubt as to whether deception is likely the application should be refused
A trade mark is likely to deceive or cause confusion by the resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market
In considering the matter all the circumstances of the case must be considered
As was observed by Parker J in Pianotist Co s Application 1 which was also a case of the comparison of two words You must take the two words
You must Judge 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 1 777
For deceptive resemblance two important questions are 1 who are the persons whom the resemblance must be likely to deceive or confuse and 2 what rules of comparison are to be
adopted in judging whether such resemblance exists
As to confusion it is perhaps an appropriate description of the state of mind of a customer who on seeing a mark thinksthat it differs from the mark on goods which  he has previously bought but is doubtful whether that impression is Dot due to imperfect recollection
See Kerly on Trade Marks 8th edition p 400 Let us apply these tests to the facts of the case under our consideration
It is not disputed before use that the two names Amritdhara  and Lakahmandhara  are in use in respect of the same description of goods namely a medicinal preparation for the alleviation of various ailments Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering both villagers and townsfolk literate as well as illiterate
As we said in Corn Products Refining Co vs Shangrila Food Products Ltd 1 the question has to be approached from the point of view of a man of average intelligence and imperfect recollection
To such a man the overall structural and phonetic similarity of the two names Amritdhara  and Lakshmandbara  is in our opinion likely
t o deceive or  cause confusion
We must consider the overall similarity of the two composite words Amritdhara  and Lakshman dhara 
We do not think that the learned Judges of the High Court were right in Paying that no Indian would mistake one for the other
An unwary purchaser of average intelligence and imperfect recollection would not as the High Court supposed split the name into its component parts and consider the etymological meaning thereof or 495 even consider the meanings of the composite words as current of nectar  or current of Lakshman 
He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased or has been told about or about which has other vise learnt and which he wants to purchase
Where the trade relates to goods largely sold to illiterate or badly educated persons it is no answer to say that a person educated in the Hindi language would go by the entymological or ideological meaning and see the difference between current of nectar  and current of Lakshman  Current of Lakshman in a literal sense has no meaning to give it meaning one must further make the inference that the current or stream  is as pure and strong as Lakshman of the Ramayana
An ordinary Indian villager or townsmen will perhaps know Lakshman the story of the Ramayana being familiar to him but we doubt if he would etymologine to the extent of seeing the so called ideological difference between Amritdhara and Lakshmandhara 
He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments
We agree that the use of the word dhara  which literally means Current or stream  is not by itself decisive of the matter
What we have to consider here is the overall similarity of the composite words having regard to the circumstance that the goods bearing the two names are medicina l preparations of the same description
We are aware that the admission of a mar is not to be refused because unusually stupid people fools or idiots may be deceived
A critical comparison of the two names may disclose some points of difference
but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard 496 to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with
a similar name
The trade mark is the whole thing the whole word has to be considered a the case of the application to register Erectiks  opposed by the proprietors of the trade mark Erector  Farwell J said in William Bailey Bir mingham Ltd8 Application 1  I do not think it is right to take a part of the word and compare it with a part of the other Word one word must be considered as a whole and compared with the other word as a whole  
I think it is a danger ous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word
Nor do we think that the High Court was
right in thinking that the appellant was claiming a monopoly in the common Hindi word dhara 
We do not think that is quite the position here
What the appellant is claiming is its right under section 21 of the Act the exclusive right to the use of its trade mark and to oppose the registration of a trade mark which go nearly resembles its trade mark that it is likely to deceive or cause confusion
A large number of decisions relating to the use of composite words such as Night Cap and RedCap Limit and Summit Rito and Lito Notrate and Filtrate etc were cited in the High Court
Some more have been cited before us
Such deci sions examples of deceptive resemblance arising out of contrasted words have been summarised at page 429 to 434 in Karly on Trade Marks 8th Edition
No useful purpose will be served by referring to them all
As we have said earlier each case must be decided or its own fact
What degree of  1 497 resemblance is necessary to deceive or cause confusion must the nature of things be incapable of definition a priori
As to the decisions in annexure A  it has been argued before us that they were not at all admissible by reason of sections 40 to 43 of the 
On behalf of the appellant it has been contended that they were admissible under section 13 of the Evidence
Act as showing the particular instances in which the appellant claimed its right under section 21 of the Act
We consider it unnecessary to decide this question for the purposes of this case because those decisions even if they are admissible under section 13 do not throw any light on the question whether Amritdhara  and Lakshmandhara  so nearly resemble each other as to cause deception or confusion
That is a question which we must determine as a case of first impression and irrespective of the earlier decisions
On a consideration of all the circumstances we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of section 101 of the Act and Registrar was right in the view he expressed
The High Court was in error taking a contrary view
We know go the second question that of acquiescence
Here again we are in agreement with the Registrar of Trade Marks who in a paragraph of his order quoted earlier in this judg ment has summarised the facts and circumstances on which the plea of acquiescence was based
The matter has been put thus in Halsbury s Laws of England Vol
32 second edition pages 659 657 paragraph 966
 If a trader allows another person who is acting in good faith to build up a reputa 498 tion under a trade name or mark to which he has rights he may lose his right to complain and may even be debarred from himself using such name or work
But even long user by another if fraudulent does not affect the plaintiff s right to section final injunction on the other hand prompt warning or action before
the defendant has built up any good will may materially assist the plaintiff s case
We do not think that there was any fraudulent user by the respondent of his trade name Lakshmandbara 
The name was first used in 1923 in a small way in Uttar Pradesh
Later it was more extensively used and in the same journals the two trade marks were publicised
The finding of the Registrar is that the appellant and its agent were well aware of the advertisements of the respondent and the appellant stood by and allowed the respondent to develop his business till it grew from a small beginning in 1923 to an annual turnover of Rs 43000 in 1946
These circum stances establish the plea of acquiescence and bring the case within sub section
2 of section 10 and in view of the admission made on behalf of the respondent that his goods were sold mainly in Uttar Pradesh the Registrar was right in imposing the limitation which he imposed
For these reasons we would allow the appeal set aside the Judgment and order of the High Court and restore those of the Registrar of Trade Marks Bombay dated September 10 1953
In the circumstances of this case there will be no order for costs
Appeal allowed


Summary:
The respondent applied for registration of the trade name Lakshmandhara in relation to the medicinal preparation manufactured by him at Kanpur since 1923
It was admitted that the respondent s product was mainly sold in the State of Uttar Pradesh
The appellant opposed the registration on the ground that it had an exclusive proprietary interest in the trade mark Amritdhara in relation to a similar medicinal preparation which had acquired considerable repu tation since 1903 and that the respondent s trade name Lakshmandhara was likely to deceive and cause confusion and therefore the registration was prohibited by section 8 of the Trade Marks Act
The Registrar of Trade Marks held that there was sufficient similarity between Amritdhar a  and Lakshamandhara so as to cause confusion and it was likely to deceive the public but the acquiescence of the appellant in the use of the trade name Lakshmandhara by the respondent in the relation to his product for a long period to the knowledge of the appellant was special circumstance under section 102 entitling the respondent to have his name registered along with the appellant s trade name
He however confined the registration to sales with the State of Uttar Pradesh
Both the appellant and the respondent appealed to the High Court which allowed the respondent s appeal holding that the words Amrit and dhara were common words in the Hindi language as also the words Lakshman and dhara and that there was no possibility of any Indian confusing the two ideas
The High Court further held there had been honest concurrent user by the respondent
 On the question of acquiescence it held against the respondent
On appeal by special leave
Held that the question whether a trade name is likely to deceive or cause confusion by its resemblance to another al
ready registered is a matter of first impression and one for decision in each case and has to be decided by taking an over
all view of all the circumstances
The standard of comparison to be adopted in judging the resemblance is from the point of 485 view of a man of average intelligence and imperfect recollection
Pianotist Co s Application  referred to
Corn Products Refining Co vs Shangrila Food Product8 Ltd  referred to
Held further that the two names as a whole should be considered for comparison and not merely the component words thereof separately
William Bailey Birmingham Ltd 8 application 1935 52 R P C 137 referred to
Held also that in the present case the similarity in the two name in respect of the same description of goods was likely to deceive or cause confusion but the facts found by the Registrar established the plea of acquiescence so a to bring the case within sub s2 of section 10 and the Registrar was right in imposing the limitation which he imposed