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

2. The appellant is a limited liability company incorporated under the laws of Switzerland and carries on business in the manufacture and sale of pharmaceutical and chemical products. The respondent is a company incorporated under the Companies Act in India and also carries on business in the manufacture and sale of pharmaceutical products.3. On December 2, 1946 the appellant applied for registration of its trade mark "PROTOVIT". The application was granted and the appellants mark was registered in Class V in respect of "Pharmaceutical preparations for human use and for veterinary use, infants and invalids foods." The appellant thereafter used that mark on multi-vitamin preparations in liquid and tablet forms and its goods are being sold under that mark at least since the year 1951.4. On January 28, 1957 the respondent applied for registration of its mark "DROPOVIT" in respect of "medicinal and pharmaceutical preparations and substances". The application was registered but the advertisement of the respondents application escaped the notice of the appellant who did not hence oppose the registration. By a letter dated March 4, 1958 Messrs. Voltas Limited, the appellants agents, drew the attention of the appellant to the respondents mark "DROPOVIT". There was negotiation between the parties but on March 19, 1958 the respondent wrote to the appellant refusing to alter its trade mark. On January 21, 1959 the appellant applied for rectification of the Register by removal therefrom of the respondents trade mark. The ground urged in support of the application was that the respondents mark so nearly resembled the appellants mark as to be likely to deceive or cause confusion. On March 9, 1960 the appellant applied for amendment of the application and an additional ground was taken that "DROPOVIT" was not an invented word. The application for amendment was allowed by the Registrar. The amended application was opposed by the respondent. By his judgment dated August 5, 1961 the Joint Registrar rejected the application for rectification holding that "DROPOVIT" was not deceptively similar to "PROTOVIT" and that the word "DROPOVIT" considered as a whole was not descriptive. The appellant took the matter in appeal to the Bombay High Court. On December 7, 1962 Mr. Justice Tarkunde dismissed the appeal. The appellant preferred an appeal under Letters Patent but the appeal was dismissed by a Division Bench consisting of Chief Justice Chainani and Mody, J. on August 17, 1964. During the hearing of the appeal the respondent restricted the designation of goods to "medicinal and pharmaceutical preparations and substances containing principally vitamins."5. The application for rectification was made on January 21, 1959 beforethe Trade and Merchandise Marks Act, 1958 (Act No. 43 of 1958) came into operation.

Court's reasoning:
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.