Case: Corn Products Refining Company Vs. Shangrila Food Products Limited

1. This appeal arises out of an application made under the Trade Marks Act, 1940, hereinafter called the Act, for registration of a trade mark. The application was made by the respondent and it was opposed by the appellant.2. The respondent is a manufacturer of biscuits. On November 5, 1949, it made the application for registration of the mark Gluvita in respect of the goods specified in class 30, which mark, it appeared later, it had not used prior to that date. The Registrar ordered the application to be advertised before acceptance on the respondents agreeing to limit the registration to biscuits only which were one of the classes of goods specified in class 30.3. The appellant is a corporation organised under the laws of the State of New Jersey in the United States. On August 31, 1942, it had registered the mark Glucovita under the Act in class 30 in respect of "Dextrosepowder mixed with vitamins), a substance used as food or as an ingredient in food; glucose for food." On the same date the appellant had also registered the same trade mark in class 5 in respect of "Infants and invalids foods".The Deputy Registrar held that Section 10(1) did not apply, for biscuits included in class 30 were not goods of the same description as glucose powder mixed with vitamins which was in the same class. He further held that the words Glucovita and Gluvita were not visually or phonetically similar and that there was no reasonable likelihood of any deception being caused by or any confusion arising from, the use of the respondents proposed mark. In regard to S. 8(a), he held applying the case of In re : an application by Smith Hayden and Coy. Ltd., (1945) 63 RPC 97, that the syllable co which was absent in the respondents proposed mark sufficiently distinguished the two marks and made it impossible for any one to be deceived or confused. One of the findings made by the Deputy Registrar was that the appellant had acquired a reputation and goodwill for its trade mark Glucovita in respect of glucose powder mixed with vitamins.6. The appellant then preferred an appeal to the High Court at Bombay from the order of the Deputy Registrar. That appeal was heard by Desai J. exercising the original jurisdiction of that Court. It was not seriously pressed before him on behalf of the appellant that the goods were of the same description and he himself also came to the conclusion that they were not so. He, therefore, held that the registration could not be refused under S. 10(1) of the Act. Desai J. agreed with the Deputy Registrars finding that the appellant had acquired a reputation among the public for the mark Glucovita in respect of glucose powder mixed with vitamins. He however disagreed with the view of the Deputy Registrar that the respondents mark was not likely to cause deception or confusion. He held that the two marks were sufficiently similar so as to be reasonably likely to cause deception and confusion. He, therefore, set aside the order of the Deputy Registrar and held that the respondents mark could not be registered in view of S. 8(a).7. Now the respondent appealed from the judgment of Desai J. This appeal was heard by Chagla C. J. and Shah J. of the same High Court. The learned Judges of the appellate bench took the view that there was no evidence that the appellants mark had acquired any reputation among the public but that the evidence produced showed that it had acquired a reputation among the public but that the evidence produced showed that it had acquired a reputation among theonly who were discerning and were not likely to be deceived or confused. According to them, the public not being aware of the reputation of the appellants trademark were not likely to be deceived or confused by the use by the respondent of its proposed trademark. They also held that the evidence established that there were a series of marks in which the prefix or suffix Gluco or Vita occurred and that it could not therefore be said that the common features Gluco and Vita were only associated with the manufacture of the appellants goods. On both these grounds they held that the proposed mark of the respondent was not likely to confuse or deceive any one. In the result, they set aside the order of Desai J. and restored that of the Deputy Registrar. The appellant has now appealed to this Court from the judgment of the appellate Judges of the High Court.

Reasoning:
9. In our judgment the view of the appellate Judges of the High Court that there was no evidence that the appellants trade mark had acquired a reputation among the public cannot be sustained.In coming to this view, they relied on the affidavits filed by the appellant wherein it was stated that "Glucovita is amark in the trade" and denoted only the products of the appellant. We think that the learned appellate Judges put too strict a meaning on the words "in the trade" in thinking that they referred only to the trades people. In our view, these words may refer also to the public.If they do, then, of course, that would be evidence that the appellants mark had acquired a reputation among theevidence provided by these affidavits make it perfectly clear that the appellants mark had acquired a reputation among the general buying public. We think it right in this connection also to refer to the respondents grounds of appeal against the judgment of Desai J. In these the respondent does not dispute, and in fact it assumes, that the appellants mark had acquired a reputation among the public. We are, therefore, fully satisfied that the appellant has established that its mark has acquired a reputation among the buyingseems clear to us that what is necessary is that the reputation should attach to the trade mark; it should appear that the public associated that trade mark with certain goods. The reputation with which we are concerned in the present case is the reputation of the trade mark and not that of the maker of the goods bearing that of trade mark. A trade mark may acquire a reputation in connection with the goods in respect of which it is used though a buyer may not know who the manufacturer of the goods is.12. In our view, therefore it would be wrong in this case to say that the appellants trade mark had not acquired any reputation among the general public and that hence there is no reasonable apprehension of their being confused or deceived by the use of the respondents proposedthe applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that these marks had acquired a reputation by user in theWe think that the view taken by Desai J., is right.It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai J. that the marks with which this case is concerned are similar. Apart from the syllable co in the appellants mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other.18. We also agree with Desai J. that the idea of the two marks is the same. The marks convey the ideas of glucose and life giving properties or vitamins. The Aquamatic case (Harry Reynolds v. Laffeatys Ld.) 1958 RPC 387 is a recent case where the test of the commonness of the idea between two marks was applied in deciding the question of similarity between them.Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion betweenis true that we have to proceed on the basis that the goods are not of the same description for the purposes of S. 10(1) of the Act. But there is evidence that glucose is used in the manufacture of biscuits. That would establish a trade connection between the two commodities, namely, glucose manufactured by the appellant and the biscuits produced by the respondent. An average purchaser would therefore be likely to think that the respondents Gluvita Biscuits were made with the appellants Glucovita glucose. This was the kind of trade connection between different goods which in the "Black Magic" case (Inre: an Application by Edward Hack)RPC 91 was taken into consideration in arriving at the conclusion that there was likelihood of confusion or deception. The goods in this case were chocolates and laxatives and it was proved that laxatives were often made with chocolate coatings. We may also refer to the "Panda" casere: an application by Ladislas Jellinek)RPC 59. The goods there concerned were shoes and shoe polishes. It was observed that shoe polishes being used for shoes, there was trade connection between them and that this might lead to confusion or deception though the goods were different. The application for registration was however refused under that Section of the English Act which corresponds to S. 8 of our Act on the ground that the opponents, the manufacturers of shoes, has not established a reputation for their trademark among the public.20. It is true that in both the above mentioned cases the two competing trade marks were absolutely identical which is not the case here. But that in our opinion makes no difference.The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesi, this latter test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the "Black Magic" and "Panda" cases, where the competing marks were identical. Whether by applying these tests in a particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of thewill assume that only liquid glucose is used in the manufacture of biscuits with glucose. But there is nothing to show that an average buyer knows with what kind of glucose, biscuits containing glucose are or can be made. That there is trade connection between glucose and biscuits and a likelihood of confusion or deception arising therefrom would appear from the fact stated by the appellant that it received from a tradesman an enquiry for biscuits manufactured by it under its mark Glucovita. The tradesman making the enquiry apparently thought that the manufacturer of Glucovita glucose was likely to manufacture biscuits with glucose; he did not worry whether biscuits were made with powder or liquid glucose. Then again it is stated in one of the affidavits filed by the appellant that the respondents director told the appellants manager that the respondent had adopted the name Gluvita to indicate that in the manufacture of its biscuits glucose was used. These statements on behalf of the appellant are not denied by the respondent. So, a trade connection between glucose and biscuits would appear to be established. We are therefore of opinion that the commodities concerned in the present case are so connected as to make confusion or deception likely in view of the similarity of the two trade marks. We think that the decision of Desai J. was right.