Corn Products Refining Co. v. Shangrila Food Products Ltd.
AIR 1960 SC 142
Shangrila Food Products (hereinafter referred to as the Respondent) was a manufacturer of biscuits. On November 5, 1949 the Respondent made an application to the Registrar for the registration of the mark “Gluvita” under the Trade Marks Act, 1940 (hereinafter referred to as the Act). The mark had not been used prior to the date of the application and was made in respect of the goods specified in Class 30 of the Act.
Corn Products Refining Co (hereinafter referred to as the Appellant) was a corporation under the laws of 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 ‘Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient of food; glucose for food” . On the same day the Appellant had also registered the same trade mark in Class 5 in respect of “Infants’ or invalids’ foods”.
The Appellant opposed to the registration of the Respondent’s mark under Sec 8(a) & Sec 10 (1) of the Act. The Respondent subsequently filed a counter statement.
Affidavits were submitted by both the Appellant and the Respondent in support of their respective cases.
The Deputy of Registrar was of the view that the words “Gluvita” & “Glucovita” were not likely to cause confusion or deception; hence the Respondent’s mark should be registered.
The Appellant appealed to the Bombay High Court against the order of the Deputy Registrar and the appeal was heard by Desai. J, who was exercising original jurisdiction of the Hon’ble Court. Hon’ble Court disagreed with the Deputy Registrar and held that the Respondent’s proposed mark could not be registered as it was likely to cause deception and confusion.
The Respondent then appealed from the judgement of Bombay High Court exercising it’s original jurisdiction. This appeal was heard by learned Judges of the Appellate bench of the same High Court, who ruled in favour of the Respondent.
It is pertinent to mention that the Division Bench was of the opinion that the Appellant’s mark ‘Glucovita’ had not acquired reputation and the their various trade marks with the prefix ad suffix ‘Gluco’ or ‘Vita’.
The Appellant then appealed to the Supreme Court from the judgement of the Appellate Judges of the High Court.
It had already been established by the lower courts and impliedly accepted by the Appellant that Sec 10 (1) does not apply to the present case, leaving the Supreme Court with only one question, if Sec 8 (a) prevents the registration of the Respondent’s proposed mark, “Gluvita”.
As per the Court, the lower courts put too strict a meaning to the words “in the trade” restricting it only to people of the trade. In the view of this Court these words may also refer to the general public (affidavits filed by the Appellant and the Respondent served as evidence to support this view) concluding that the Appellant’s trademark had acquired a reputation among the public and therefore the proposed mark of the Respondent was likely to cause confusion or deception.
Thus, the first reasoning of the Appellate bench was negated by reading the affidavits of the contesting parties and considering the sales of Appellant.
As far as the second reasoning of the Appellate Bench of Bombay High Court was concerned,(that there was no reasonable apprehension of confusion or deception was, as there were various trade marks with a prefix or suffix ‘Gluco’ or ‘Vita’ and that made it impossible to say that the common features ‘Glu’ and ‘Vita’ were only associated with the appellant’s products) the Supreme Court observed that it is a well-recognised principle that marks comprising common elements shall be in fairly extensive use in the market in which the marks under consideration are being or will be used. The series of marks containing the common element/s only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is on the applicant (the Respondent) who wants to rely on those marks. The Respondent had led no evidence of the user of the marks with the common element. The Appellant itself in one of the affidavits stated that there were biscuits in the market bearing the marks “Glucose Biscuits”, “Gluco Biscuits” and “GlucoaLactine Biscuits” but these marks do not help the Respondent in the present case as those are not marks but ordinary dictionary words with common element/s.
Therefore, the Court believed that the learned Appellate Judges were in error in deciding in the favour of the Respondent basing themselves on the series marks, having “Gluco” or “Vita” as a prefix or suffix.”
The Court agreed with Desai .J that the idea of the two marks is the same. Both marks convey the same idea of glucose and life giving properties of vitamins. Even though Sec 10 (1) cannot be applied to the case, there is evidence that glucose was used to manufacture the biscuits which established a trade connection between the two commodities, namely glucose manufactured by the Appellant and biscuits manufactured by the Respondent.
The Court opined that 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 and confusion. Trade connection between different goods is another such test.
The Court upheld the decision of Desai. J and set aside the order of the learned appellate Judges of the High Court and Deputy of Registrar.
The appeal was allowed.
Author: Aishwarya Pundir, ILS Law College, Pune