Amritdhara Pharmacy Vs. Satya Deo Gupta
AIR 1963 SC 449
The Respondent (Satyadeo Gupta) had applied for registration of the trade name of a medicinal preparation “Lakshmandhara” in relation to the medicinal preparation since 1923. It was admitted by the Respondent that the Respondent’s product was mainly sold in the State of Uttar Pradesh and there were only sporadic sales in other states. The Appellant (Amritdhara Pharmacy) opposed the registration of the mark ‘Lakshmandhara’ 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 reputation since 1901 and that the respondent’s trade name “Lakshmandhara” was likely to deceive and cause confusion and therefore the registration was prohibited by Sections 8 and 10(1) of the Trade Marks Act, 1940. In response to the same the Respondent filed a counter affidavit, raising the defenses of honest concurrent user and acquiescence on part of the Appellant as the Respondent was using the mark ‘Lakshmandhara’ since 1923.
- Whether the name ‘Lakshmandhara‘ was likely to deceive the public or cause confusion to trade within the meaning of Sections 8 and 10 (1) of the Act.
- 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-s. 10 of the Act.
REGISTRAR OF TRADE MARKS:
The Registrar of Trade Marks held that There was sufficient similarity between “Amritdhara‘ 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 S. 10(2) entitling the respondent to have his name registered along with the appellant’s trade name. Registrar, however, confined the registration to sales with the State of Uttar Pradesh only.
As a result of this order, passed by the Registrar, two appeals were filed. One by the Appellant seeking cancellation of Registration of Respondent’s mark altogether and one by the Respondent seeking registration for other states apart from Uttar Pradesh.
HIGH COURT (Allahabad):
In appeals the Hon’ble Allahabad High Court, rejected the appeal of the Appellant and allowed the appeal of the Respondent allowing the registration of the mark ‘Lakshmandhara’ for the whole of India. The Hon’ble High Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are dissimilar and the words ‘Amrit’ and ‘Dhara’ being of common language cannot be made the monopoly of any individual and thus the Hon’ble High Court found no reason to disallow registration of the trade mark ‘Lakshmandhara’.
On the question of honest concurrent use the Hon’ble High Court favoured the Respondent but on the question of acquiescence founded favour in the arguments of the Appellant and held in his favour.
Aggrieved by the order of the High Court, an Special Leave Petition (SLP) was filed in the Supreme Court of India. The full bench of the Hon’ble Supreme Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are similar and thus overruled the decision of the Allahabad High Court and upheld the decision of the Registrar of Trade Marks. In coming to the said conclusion, the Court relied on:
(i) the test of comparison of marks, which states that the question of comparison of two marks has to be approached from the point of view of a man of average intelligence and imperfect recollection. The Court held that-
“a critical comparison of 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 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”; and
(ii) acquiescence by the Appellant to the use of the Respondent of the mark ‘Lakshmandhara’.
Author(s): Ankit Rastogi & Payal Lamba