Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories
AIR 1965 SC 980
• Respondent firm was founded in 1926 under the name of “Navaratna Pharmacy” later changed to “Navaratna Pharmaceutical Laboratories” in 1945. Respondent was a manufacturer of medicinal products and proprietor of two registered trademarks “Navaratna” and “Navaratna Pharmaceutical Laboratories” from a period prior to February 25, 1937.
• Appellant carried on business which involved preparation of ayurvedic pharmaceutical products under the name of “NavaratnaKalpa Pharmacy” and had been vending medicines prepared by him under the name of “NavaratnaKalpa”.
• The Appellant applied for the registration of “NavaratnaKalpa” as a trademark which was successfully opposed by the Respondent. The Appellant moved to the Registrar of Trade Marks, for removing from the register the trade mark “Navaratna” by itself or as parts of other marks as a trademark for goods belonging to the Respondent.
• The Registrar directed the Appellant to move to the High Court as the Respondent firm had already filed an Original suit in the District Court for a perpetual injunction against the Appellant for infringing the exclusive right that the Respondent had over the words “Navaratna” and “Navaratna Pharmaceutical Laboratories” by advertising his own products under the name of “NavaratnaKalpa” and also by passing off his goods as those of the Respondents.
• The District Court granted the Respondent a decree for an injunction confined to the trademark “Navaratna Pharmaceutical Laboratories”.
• The Appellant made an appeal against the decree of the District Court and also filed an Original Petition in the High Court of Travancore-Cochin making the same prayer as he did before the Registrar of Trade Marks. The decree against the Appellant was confirmed by the High Court and the Original Petition seeking removal of the trade marks of the Respondent was dismissed.
• Appellant filed two Special Leave Petitions before the Supreme Court against the orders of the High Court affirming the decree against the Appellant granted the District Court and dismissing the Original Petition of the Appellant.
Arguments on behalf of the Appellant:
• The Counsel on behalf of the Appellant argued that “Navaratna” did not qualify for registration as Section 6 (1) (d) of the Trade Marks Act, 1940 excluded words “having direct reference to the character or quality of the goods” from being treated as distinctive .
• “Navaratna” is a Sanskrit word describing Ayurvedic preparations of a particular composition and is incapable of being distinctive.
• “Navaratna” neither by itself nor in combination with other words like “Pharmaceutical” or “Laboratories” which are ordinary English words confers has any quality of distinctiveness.
• The Counsel relied on the judgement in the case of India Electric Works Ltd; (1) (1) 49 C.W.N. 425, wherein the Court was concerned with the appeal from an order of the Registrar refusing registration in the respect of an “old mark”, i.e., used before February 25, 1937. The mark in question was the word “India” as applied to electric fans. The Judge dismissed the appeal on the ground that the word “India” was a geographical word and therefore would not qualify for registration as being prohibited by Sec 6 (1) (d).
• The next argument made by the Counsel on behalf of the Appellant was based on the dissimilarity of the packing in which the goods of the two parties were vended. The Counsel drew attention the fact that the difference in the physical appearance of the two packets by reason of the variations in their colour and other features and their general get up together with the name and address of the manufacturer was prominently displayed on his packets were all set out for negating the Respondent’s claim that the Appellant had passed of his goods as those of the Respondents.
Arguments on behalf of the Respondent:
The arguments on behalf of the Respondent solely rely on the proviso to Section 6 (3) of the Act, which urged that, every mark which had been in use prior to the February 25, 1937 qualified for registration. Hence, the Respondent complained both of an invasion of a statutory right by the Appellant under Section 21 of the Trade Marks Act in respect of a registered trademark and also for passing off goods by the use of the same mark as the Respondent’s.
If the matter had to be decided in terms of Section 6 (1) alone, there is great force in the argument of the Counsel on behalf of the Appellant as regards to the non-registerability of the Respondent’s mark.
When the matter is read in reference to the terms of proviso to sub section (3) of Section 6, the Supreme Court finds no error in the approach of the learned District Judge that the length of the user world be a material factor for the mark to become distinctive and had become exclusively associated with the goods of the Respondent as they are using the said mark since 1926 and the said fact was not disputed.
While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. The use by the Defendant of the trade mark of the Plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases.
In an action for infringement of a trade mark the onus would be on the Plaintiff (Respondent) to establish that the trade mark used by the Defendant (Appellant) is deceptively similar. This has to be done by a comparison of the two marks. Where the similarity between the Plaintiff’s and Defendant’s marks is so close either visually, phonetically or otherwise, the Court reaches the conclusion that there is an infringement. No further evidence is required to establish that the Plaintiff’s rights are violated.
Expressed in another way, if the essential features of the trade mark of the Plaintiff have been adopted by the Defendant, the fact that the get- up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the Plaintiff.
A finding regarding the packing is relevant with respect to the relief on the ground of passing off, but plays a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and a statutory remedy,under S. 21, for vindication of his exclusive right to use it.
The question of deceptive similarity is one of facts, unless the test employed suffers from error the Court would not interfere. In the instant case there being no such error, the conclusion reached by both the lower courts that the Appellant’s mark was deceptively similar to that of the Respondent, cannot be interfered with.
Lastly, it was submitted that this was a case of honest con-current user within Section 10(2) of the Trade Marks Act, 1940. However, this point was not raised in the Lower Courts, therefore the Supreme Court did not entertain it either.
As a result, the appeals of the Appellant were dismissed.
Author: Aishwarya Pundir, ILS Law College, Pune