Case: F. Hoffmann-La Roche &amp; Co. Ltd Vs. Geoffrey Manners &amp; Co. Pvt. Ltd

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.13. 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 56 (2) that the Registrar should limit the respondents 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 Rule 61 (2) 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.14. 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 respondents trade mark was allowed to continue to remain on the Register and the application for rectification made by the appellant should be dismissed.15. 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 9 (1) 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 of 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."16. It is contended on behalf of the appellant that "DROPOVIT" meant only "DROP OF VITAMIN" with the word of being misspelled 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 case, (1908) 25 RPC 265 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 any 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."17. In the case of De Cordova v. Vick Chemical Co. (1951) 68 RPC 103, 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 "DROPOVIT" was descriptive. It was, therefore legitimate to draw the inference that the word "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 him. 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.

Decision (1 = appeal accepted, 0 = rejected): 0

Explanation:
0[ds]The tests for comparison of the two word-marks were formulated by Lord Parker in Pianotist Co., Ltd.,s application (1906) 23 RPC 774 at p.is necessary to apply both the visual and phoneticis also important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding period 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.In order to decide whether the word "DROPOVIT" 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 o, the next is a consonant and the fifth is again a common vowel o. The combined effect is to produce anis 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 ofeven 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 Rule 61 (2) 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 considerableHaving 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 respondents trade mark was allowed to continue to remain on the Register and the application for rectification made by the appellant should bethis connection the High Court has pointed out that the original application for rectification did not contain the ground that the word "DROPOVIT" was descriptive. It was, therefore legitimate to draw the inference that the word "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 him. 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.