20 October 1964
Supreme Court


Case number: Appeal (civil) 522 of 1962






DATE OF JUDGMENT: 20/10/1964


CITATION:  1965 AIR  980            1965 SCR  (1) 737  CITATOR INFO :  R          1972 SC1359  (7)

ACT: Trade  Marks Act (5 of 1940), s.  6-Proviso-Scope  of-Action for infringement of trademarks  and action for  passing off of goods-Difference in factors to be considered.

HEADNOTE: The respondent, a firm manufacturing medicinal products, was the proprietor of two registered trade marks "Navaratna" and "Navaratna  pharmaceutical  Laboratories "  from  a,  period prior  to  25th February 1937. When the appellant,  who  was also  a manufacturer of medicinal preparations,  sought  the registration of the words "Navaratna Pharmacy" as his  trade mark  the respondent objected successfully.   The  appellant then  moved the Registrar of Trade Marks for  removing  from the  register, the trade mark "Navaratna" and  for  deleting the  word  "Navaratna"  from the other  trade  mark  of  the respondent.   The  Registrar directed him to move  the  High Court  for the rectification, as the respondent had by  that time  filed  a suit in the District Court  for  a  permanent injunction  restraining  the  appellant  from  selling   any preparation  under a mark containing the  word  "Navaratna". ’Me appellant accordingly filed an original petition in  the High  Court.  The suit in the District Court was decreed  in favour  of  the respondent with respect to  the  trade  mark "Navaratna  Pharmaceutical Laboratories." An appeal  against the decree filed by the appellant, and his Original Petition were heard together by the High Court and the decree of  the District  Court in favour of the respondent  was  confirmed. It  was  held  that : (i) having regard  to  the  method  of packing  adopted  by  the appellant, he was  not  guilty  of passing  off,  (ii) the respondent was not entitled  to  any relief  on  the  ground  of the  infringement  of  the  mark "Navaratna" as it was a common word in Ayurvedik phraseology and  used in connection with several medicinal  preparations and   (iii)   the  trade  name   "Navaratna   Pharmaceutical Laboratories"  had been use as a trade mark, by the  respon- dent,  for  a  very  long  time  and  had  come  to   denote exclusively  his goods; and that the trade mark having  been in use from before the specified date February 25, 1937  and



having  acquired factual distinctiveness,  was  registerable under  the proviso to s. 6(3) of the Trade Marks Act,  1940. In  appeal to the Supreme Court it was contended that :  (i) the  decision  of  the  High  Court  that  the  trade   mark "Navaratna   Pharmaceutical  Labradortories’   was   validly registerable   was  inconsistent  with  the   finding   that "Navaratna" which was the crucial word in the trade mark was only  a descriptive word in regard to which  the  respondent could  obtain no exclusive right, and (ii) the finding  that the  marks of the appellant and respondent were  deceptively similar  was inconsistent with the finding that the  packing in which the appellant’s goods were marketed was not  likely to cause confusion or deceive purchasers. HELD  : (i) A mark which is not "adapted to distinguish"  by the  application  of the tests laid down in s. 6(1)  of  the Act,  could still qualify for registration by virtue of  the proviso  to s. 6(3), by proof of  acquired  distinctiveness. Under the proviso, with respect to marks in use from a  date prior to 25th February 1937, "the Registrar shall not refuse registra- 738 tion  by reason only of the fact that the trade mark is  not adapted to distinguish as aforesaid, and may accept evidence of  acquired distinctiveness as entitling the trade mark  to registration".   The  word  "distinctiveness"  cannot   mean "adapted  to  distinguish" for then, the proviso  would  add nothing  to the section and would make no variation  in  the law as between new marks and old marks which had been in use continuously from before the specified date.  A construction which would lead to old marks and new marks being placed  on the  same footing and being subjected to the same tests  for registration cannot be accepted.  However, a mark might have been  used  prior to the specified date, but  it  might  not qualify  for  registration under the proviso by  not  having acquired  that degree of factual distinctiveness  which  the Registrar  considers sufficient to enable it to qualify  for registration.   Therefore,  when  the  Registrar  records  a finding  that the mark submitted for registration  was  "not adapted  to distinguish as aforesaid", he was authorised  to permit evidence being led as to "acquired  distinctiveness". Since  both  the trial court and the High Court  found  that through  long  user  from  1926 onwards,  the  mark  of  the respondent  had become associated exclusively in the  market with  the  pharmaceutical products manufactured by  him,  it would  follow that his mark was rightly registered and  that he  was  entitled to protect an invasion of his  rights,  by seeking  a  perpetual injunction against those  who  invaded them. [744 G; 750 A-C, E-F; 751 B, D; 752 A-B G-H; 753 A] (ii)In an action for infringement of a trade mark the  onus would  be on the plaintiff to establish that the trade  mark used  by  the defendant is deceptively  similar.   This  has necessarily to be done by a comparison of the two  marks-the degree  of  resemblance necessary being incapable  of  defi- nition by objective standards.  Where the similarity between the  plaintiff’s  and defendant’s marks is so  close  either visually,  phonetically or otherwise, and the Court  reaches the  conclusion  that  there is an  invitation,  no  further evidence  is  required  to establish  that  the  plaintiff’s rights  are  violated.  The fact that the  get  us,  packing etc., showed marked differences, or indicate clearly a trade origin  different from that of the registered proprietor  of the  mark  would  be immaterial.  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 fact, unless the test employed  suffers from  error this 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. [754 D-F; 755 A-C, F-G; 756 F-H]

JUDGMENT: CIVIL APPELLATE JURISDICTION: Civil Appeals No. 522 and  523 of 1962. Appeals  by special leave from the judgment and order  dated November 30, 1960 of the Kerala High Court in A. S. No.  233 of 1959 and O.P. No. 19 of 1952. C.B. Agarwala, N. K. Anand and J. B. Dadachanji, for  the appellant (in both the appeals). G.S.  Pathak and Sardar Bahadur, for the  respondent  (in both the appeals). 739 The Judgment of the Court was delivered by Ayyangar  J. These two appeals, by special leave,  are  con- cerned  with the validity of the respondent-firm’s claim  as the  registered  proprietor  of  a  Trade  Mark   ‘Navaratna Pharmaceutical  Laboratories’  used by it on  its  medicinal preparations. The  two  appeals  arise out of  different  proceedings  but before  narrating  their history it would be  convenient  to briefly  set  out  the facts upon which  the  claim  of  the respondent to the exclusive use of this Trade Mark is based. The respondent, as stated already, is a firm and it  carries on  business at Ernakulam in the same name and style as  the Trade  Mark  now in  controversy--"Navaratna  Pharmaceutical Laboratories".  As its name indicates, the firm manufactures medicinal  products.  The business of the firm  was  founded sometime  in  1926 by one Dr. Sarvothama Rao who is  now  no more.   When  started, the business  was  called  ’Navaratna Pharmacy’  but from January, 1945 the name of  the  business was  changed  to the present  one  Navaratna  Pharmaceutical Laboratories.  From the very beginning the proprietors  used the  Trade,  Mark  "Navaratna" on the  products  which  they manufactured   and  sold.   In  December,  1928   the   word ’Navaratna’  and the name ’Navaratna Pharmacy’ as  connoting the  products  of the respondent firm were registered  by  a declaration of ownership before the Registrar of Assurances, Calcutta.   When a legislation substantially similar to  the Indian  Trade  Marks Act, 1940 was enacted in the  State  of Cochin  [Vide the Cochin Trade Marks Act 19 of 1199  (1944)] the  respondent-firm  registered the word  ’Navarama’  as  a Trade  Mark  in respect of its  medicinal  preparations,  on January  31, 1947 and another mark consisting of  the  words ’Navaratna  Pharmaceutical Laboratories’ to denote the  same products  on February 17, 1948.  There is evidence that  the respondent-firm has been having an expanding business in the products which it manufactures and has been selling the same under  the  above  and other cognate  names,  and  this  has continued ever since. The  Trade  Marks  (Amendment) Act, 1946 (Act  12  of  1946) inserted  s. 82-A in the Trade Marks Act of 1940  and  under this.  provision  the Central Government  was  empowered  to enter  into reciprocal arrangements with Indian  States  for mutual recognition of Trade.  Marks registered in the  other



territory.  There was a similar provision in s. 78-A of  the Cochin  Act  and  availing  itself  of  this  provision  the respondent-firm  applied for the registration of  the  words ’Navaratna Pharmaceutical Laboratories’ in the Trade spp./65-4 740 Marks  Registry at Bombay.  The application  was  advertised and  no opposition having been entered, the Trade  Mark  was registered. Pausing  here, certain facts have to be set out in  relation to the :appellant, since they are material for understanding the Origin Of the proceedings which have given rise to these appeals.   The  appellant  has, for some  Years  Past,  been carrying  on  business  in  the  preparation  of   Ayurvedic Pharmaceutical  Products  at Jullundur City in  East  punjab under  the name of the ’Navaratna Kalpa Pharmacy "  and  had been  vending the medicines Prepared by him under  the  name ’Navaratna  Kalpa"- while so, in October, 1946, The  applied for  the  registration of the Words "NaVaratna Kalpa"  as  a Trade Mark for his medicinal preparations.  This application was  advertised  in April, 1950,  and  the,  respondent-firm opposed the application for registration on the ground  that the   word  -Navaratna"  was  descriptive  and,  having   no distinctiveness,  could not be registered.   This  objection prevailed and the registration was refused.  This led to the proceedings which have culminated in these appeals. In the first instance, the appellant moved the Registrar  Of Trade  Marks for removing from the register the  trade  mark "Navaratna" and the word "Navarama" in the Other mark of the respondent.  By this date, however, the respondent had filed wit No. 233 of 1951 (from which C.A. No. 522 of 1962 arises) before  the  District  Judge, Anjikaimal,  for  a  permanent injunction  restraining  the  appellant  from   advertising, selling or offering for sale any preparations under a  trade mark combining the word ’Navaratne or any similar word  etc. By  reason of the pendency of this proceeding in  which  the validity  of the registration of the respondent’s  mark  was directly involved the Registrar refused his application, and directed  the appellant to move the High Court within  whose jurisdiction  the  District  Court  was  situated  for   the rectification  of the register by deleting the  respondent’s mark.  The appellant accordingly Mod O.P. No. 19 of 1952  in the  High  Court  of  Travancore-Cochin  praying  that   the registration of the word "’Navaratna:" by itself or as  part of  other marks as a trade mark for goods belonging  to  the respondent  be removed from the register.  Civil Appeal  523 of  1962 arises out of the order of the High Court  on  this petition.   This original petition No. 19 of 1952  was  kept pending in the High Court after it was ready for hearing and was  heard along with the appeal against the decree  of  the District Judge in Original Suit No. 233 of 1951. 741 The  original suit was, as stated earlier, for  a  perpetual injunction   against  the  appellant  for  using  the   word "Navaratna" and the cause of action for that suit was stated to  be  that  the plaintiff  (respondent  before  us)  being proprietor of the two registered trade marks "Navaratna" and "Navaratna  Pharmaceutical  Laboratories" had  an  exclusive right   to  the  use  of  those  marks  for  his   medicinal preparations  and that the said right was infringed  by  the defendant (appellant before us) advertising his goods  under the  name  "Navaratna Kalpa" with the trade  origin  of  the goods being described as "Navaratna Kalpa Pharmacy".   There was  also  an  allegation that by use  of  these  marks  the defendant  was  passing  off  his  goods  as  those  of  the



plaintiff. By  his written statement the defendant  raised  principally three points: 1.(a)..........  That the word "Navaratna" in its  etymo- logical  sense meant Ayurvedic preparations of a  particular composition and that the word had been generally adopted  by several  firms  and  organisations  for  designating   their preparations  which they vended with that  description.   It was  therefore submitted that the plaintiff could  claim  no exclusive  title to the use of that word which was a  common word  for the description of the product as a trade mark  to designate its pharmaceutical preparations. 1.(b) As regards the trade mark "Navaratna Pharmaceutical Laboratories" which was in fact the name in which the plain- tiff  carried  on  its business, the defence  was  that  the crucial integer in that mark was the expression  "Navaratna" and that if the plaintiff was not entitled to the  exclusive use  of the word "Navaratna" to designate its products,  the combination   of   the  word  with  the  two   other   words "Pharmaceutical"  and  Laboratories"  which  were   ordinary English words descriptive of the place where medicines  were prepared could not render the trade mark a registerable one. For them two reasons the defence was that no claim could  be made to relief under s. 21 of the Trade Marks Act, 1940. (2)Next  it was submitted that even on the basis that  the plaintiff  was entitled to the use of the  word  "Navaratna’ either alone or in the combination "Navaratna Pharmaceutical Laboratories",  still  the  use, of the trade  mark  by  the defendant  of  the words "Navaratna  Kalpa"  and  "Navaratna Kalpa Pharmacy" were not 742 either  identical  with  nor  deceptively  similar  to   the plaintiffs  marks  and therefore he was not  guilty  of  any infringement. (3)As regards the claim for relief on the basis of passing off, the defendant laid stress upon the packing, get-up  and the  manner  in  which the trade origin  of  the  goods  was clearly   brought   out  in  the  packages  in   which   his preparations  were marketed and it was submitted  that  they clearly negatived any possibility of passing off. Appropriate  issues were raised based on the  pleadings  and the contentions just now indicated and the learned  District Judge found:   (1)  that  having  regard to  the  method  of packing adopted and theother features of the get-up  etc., on which the defence had relied,the  defendant  was   not guilty  of passing off; (2) that the word "Navaratna" was  a common  word in Ayurvedic phraseology and  consequently  the plaintiff could not claim any exclusive title to the use  of that  word by reason of his having used it for his  products even  though this had been for a number of years.  To  reach this finding the learned District Judge pointed out that  it was  brought to his notice that there were several  concerns manufacturing  and vending Ayurvedic preparations which  had for  a very long time past either used marks which  included that  word and had described their products by calling  them "Navaratna" either alone or in combination with other words. The  right of the plaintiff to relief on the ground  of  the infringement   of   the  mark  ’Navaratna’   was   therefore disallowed. (3) Dealing next with the question as to whether the  mark "Navaratna Pharmaceutical Laboratories"  could  be validly   registered   and  rights  claimed   for   such   a registration,   the  learned  Judge  answered  it   in   the affirmative pointing out that no evidence was placed  before the Court of the use by any other person, firm or concern of that   name   and  that  there  was   evidence   which   was



uncontradicted  that  trade name  "Navaratna  Pharmaceutical Laboratories" or some variant of the same had been used as a trade  mark  by the plaintiff for a very long time  and  had come  in the market to denote exclusively the goods  of  the plaintiff.  The learned District Judge further held the mark "Navaratna  Pharmaceutical Laboratories" or its  permissible variants  had  been used long before February 25,  1937  and having  acquired factual distinctiveness,  was  registerable under the proviso to S. 6(3) of the Act.  The plaintiff was, therefore,  granted a decree for an injunction  confined  to the trade mark "Navaratna Pharmaceutical Laboratories". 743 From this judgment the appellant filed an appeal to the High Court and the learned Judges heard the appeal along with the Original  Petition  under  s. 46 of the  Act  filed  by  the appellant.    By  a  common  judgment  the  learned   Judges confirmed  all  the findings and the decree of  the  learned District  Judge and made an order in the, Original  Petition conformably  to this decision.  These two appeals have  been preferred  by  the appellant after obtaining  special  leave from this Court in these two matters respectively. The  first submission of Mr. Agarwala, learned  Counsel  for the  appellant  was  that the judgment  of  the  High  Court holding the respondent’s claim to the trade mark  "Navaratna Pharmaceutical  Laboratories" as a validly  registered  mark was really inconsistent with their finding that  "Navaratna" which was the crucial and important word in that trade  mark was  a  descriptive word in regard to which  the  respondent could obtain no exclusive right by any amount of user.   His further  submission  was that if he was right in  this,  the addition  of the words "Pharmaceutical"  and  "Laboratories" which were common English words of ordinary use to designate the  place where pharmaceutical products  are  manufactured, were,  on the terms of s. 6 of the Trade Marks Act and  even otherwise, incapable of acquiring distinctness by mere user. He, therefore submitted that the plaintiff had no  exclusive right to the use of the mark as a registered trade mark  and that  consequently  his claim for the  relief  of  perpetual injunction  Under  s.  21 of the Trade  Marks  Act  was  not sustainable.  For this purpose learned Counsel relied on the provisions  of  s.  6 of the Trade  Marks  Act,  1940  which provided  the positive qualifications for registrability  of trade mark on the relevant date That section runs:               "6.(1)  A trade mark shall not  be  registered               unless it contains or consists of at least one               of   the   following   essential   particulars               namely:-               (a)   the  name  of a company,  individual  or               firm,  represented in a special or  particular               manner;               (b)   the  signature  of  the  applicant   for               registration   or  some  predecessor  in   his               business;               (c)   one or more invented words;               (d)   one  or  more  words  having  no  direct               reference  to the character or quality of  the               goods,   and  not  being,  according  to   its               ordinary significa-                744               tion,  a geographical name or surname  or  the               name of a sect, caste or tribe in India;               (e)   any  other  distinctive  mark,  provided               that  a  name, signature, or any  word,  other               than  such as fall within the  description  in               the  above clauses, shall not be  registerable



             except upon evidence of its distinctiveness.               (2)For  the purposes of this  section,  the               expression  distinctive’  means  adapted,   in               relation  to the goods in respect of  which  a               trade  mark is proposed to be  registered,  to               distinguish goods with which the proprietor of               the  trade mark is or may be connected in  the               course  of  trade from goods in  the  case  of               which  no  such  connection  subsists,  either               generally or, where the trade mark is proposed               to  be registered subject to  limitations,  in               relation  to  use  within the  extent  of  the               registration.               (3)in  determining  whether a  trade  mark  is               adapted  to  distinguish  as  aforesaid,   the               tribunal  may  have regard to  the  extent  to               which-               (a)   the trade mark is inherently so  adapted               to distinguish, and               (b)   by  reason of the use of the trade  mark               or of any other circumstances, the trade  mark               is in fact so adapted to distinguish :               Provided  that  in the case of  a  trade  mark               which has  been  continuously used (either  by               the applicant for the registration or by  some               predecessor in his business, and either in its               original form or with additions or alterations               not  substantially affecting its identity)  in               relation to which registration is applied for,               during a period from a date prior to the  25th               day   of  February,  1937,  to  the  date   of               application  for registration,  the  Registrar               shall  not refuse registration by reason  only               of the fact that the trade mark is not adapted               to  distinguish as aforesaid, and  may  accept               evidence   of  acquired   distinctiveness   as               entitling the trade mark to registration." The learned Counsel particularly stressed clause (d) of sub- s. (1) which excluded words "having direct reference to  the character  or  quality of the goods" from being  treated  as distinctive,  and thus qualifying for  registrability.   ’Me word ’Navaratna’ having been held to be not distinctive  and indeed incapable of becoming 745 distinctive by reason of its being merely the Sanskrit  word for  describing  Ayurvedic  preparations  of  a   particular composition,  he submitted that the  words  "Pharmaceutical’ and  ’Laboratories’  could  neither  by  themselves  nor  in combination  with  it confer upon that word the  quality  of distinctiveness having regard to their ordinary  descriptive signification.  If the matter had to be decided in terms  of s. 6(1) alone without reference to the terms of the  proviso to  sub-s.  (3) to which we shall advert  presently  we  see great force in the submission of the learned Counsel. As  Pry L. J. said in  : Dunn(1) with reference to the  cor- responding law in U.K. which has been reproduced by s. 6  of the Indian Act:               "It  is said that the words ’Fruit-Salt’  have               never  been used in collocation except by  Mr.               Eno.    Be  it  so  ........  I  cannot   help               regarding the attempt on Mr. Eno’s part as  an               instance  of that perpetual struggle which  it               seems  to  me is going on to  enclose  and  to               appropriate as private property certain little               strips of the great open common of the English



             language.  ’Mat is a kind of trespass  against               which  I think the courts ought to  set  their               faces."               There can be no dispute either that the  words               ’pharmaceutical Laboratories" used in relation               to  medicinal  preparations  have  "a   direct               reference  to  the character  of  the  goods".               Speaking of the mark "Torq-set" in respect  of               screws  bolts, rivets and studs and  fastening               devices, Lloyd-Jacob 1. observed :(2)               "Direct  reference  corresponds in  effect  to               aptness for normal description". Judged by this test it could not be seriously contended that the  prohibition in s. 6 (1) (d) would be attracted to  this mark.   In the present case, the words ’Pharmaceutical’  and ’Laboratories’   would  have  a  direct  reference  to   the character of the goods since the trade marks to which it  is claimed  to  attach  them are  medicinal  or  pharmaceutical products.  In this connection reference may also be made  to a decision of the House of Lords to which Mr. Agarwala  drew our attention.  Yorkshire Copper Works Limited’s Application for   a  Trade  Mark.(8)-Yorkshire  Copper  Works  Ltd.   v. Registrar of Trade Marks(4) was an appeal from (1)  6 R.P.C. 379 at 386. (2)  In  the  matter of American Screw Co.’s  appln.  [1959] R.P.C. 344 at 346. (3)  (1954) 71 R.P.C. 150. (4)  (1952) 69 R.P.C. 207; (1953) 70 R.P.C. 1. 746 the Court of appeal affirming the decision of the Divisional Court  which  rejected  an appeal against an  order  of  the Registrar  refusing to register the Trade  Mark  "Yorkshire" for  "solid drawn tubes and capillary fittings all  made  of copper  or  non-ferrous  copper  alloys".   The  refusal  to register  was on the ground of the word  being  geographical and so being disqualified for registration under a provision of the U.K. Trade Marks Act of 1938 -identical in terms with S.  6 (1 ) (d) of the Act.  The applicants led  evidence  to establish  and  claimed  that  they  had  established   that everyone  concerned in the trade in copper tubes  understood "Yorkshire Tubes" as meaning the products of the  applicant. It  was  therefore contended that the word  ’Yorkshire’  had lost  its primary geographical significance and  had  become 100%  distinctive of the applicant’s goods.   In  dismissing the appeal Lord Simonds, Lord Chancellor observed               "I   am  content  to  accept   the   statement               reiterated  by their learned Counsel that  the               mark    had    acquired    100    per     cent               distinctiveness.   In spite of this  fact  the               Registrar  refused registration and  has  been               upheld  in his refusal by Lloyd-Jacob, J.  and               the   unanimous  opinion  of  the   Court   of               Appeal........ Here I must express my emphatic               dissent   from  the  proposition   which   was               strenuously  urged by Counsel for  the  Appel-               lants   that   distinctiveness  in   fact   is               conclusive-at  any rate, if there is  what  he               called  100 per cent distinctiveness.   In  my               opinion the decisions of this House in the  W.               &  G. case and the Glastonbury case are  fatal               to this proposition and I am content to accept               as  accurate  the clear  exposition  of  those               cases given by the learned Master of the Rolls               in the present case.  He took the view which I               share  that  the Court of Appeal  had  in  the



             Liverpool  Cable case rightly interpreted  the               opinion of Lord Parker in the W. & G. case and               that   this  House,  in  its  turn,   in   the               Glastonbury case endorsed that interpretation.               Accepting that view of the law, which  indeed,               if  the matter were res integral I should  not               hesitate  to commend to your Lordships,  I  do               not  see how the Registrar could have come  to               any  other conclusion.  Unless,  having  found               distinctiveness  in fact, he needed to pay  no               regard   to  the  other  factor  of   inherent               adaptability,  he was faced by the  fact  that               there  could not well be a  geographical               name less "inherently adapted" than  Yorkshire               to distinguish the               747               goods of the Appellants.  I do not propose  to               try  to define this expression.  But  I  would               say that, paradoxically perhaps, the more  apt               a   word  is  to  describe  the  goods  of   a               manufacturer,  the  less  apt it  is  to  dis-               tinguish  them:  for  a word that  is  apt  to               describe  the goods of A, is likely to be  apt               to  describe the similar goods of B. It is,  I               think,   for   this   very   reason   that   a               geographical   name  in  prima  facie   denied               registrability.   For, just as a  manufacturer               is  not entitled to a monopoly of a  laudatory               or descriptive epithet, so he is not to  claim               for  his  own a  territory,  whether  country,               county or town, which may be in the future, if               it  is  not now, the seat  of  manufacture  of               goods similar to his to own. Of  course, where the geographical area is very small  there is  a  possibility of the  inherent  incapability,to  attain distinctiveness becoming. attenuated, but we do not go  into these  details  as  they are  unnecessary  for  our  present purpose.   The  learned Counsel is therefore  right  in  his submission  that  if  the right of  the  respondent  to  the registration of his mark had to be considered solely on  the terms of s. 6(1), the appellants submissions as regards  the non-registrability of the respondent’s mark would have great force. That,  however,  is  not the  position  here.   The  learned District  Judge  has, on the basis of  evidence  recorded  a finding   that   the   mark   or   trade   name   ’Navaratna Pharmaceutical   Laboratories’   had   by   user    acquired distinctiveness  in the sense of indicating  the  respondent and  the  respondent  alone as  the  manufacturer  of  goods bearing that mark and that finding has been affirmed by  the learned  Judges  of the High Court.   The  learned  District Judge  has further held that the respondent has  been  using that  mark or a permissible variant of that mark  from  long before  the  25th February 1937, and  that  in  consequence, notwithstanding   that  the  mark  might  not  satisfy   the requirements of s. 6(1) as explained by sub-ss. (2) & (3) of that  section, still it was registrable as a Trade  Mark  by virtue of the proviso to s. 6(3) of the Act.  We do not find any  error in the approach of the learned District Judge  to this question.  In the first place, there was the  intention on the part of the proprietor of the mark to indicate by its use the origin of the goods on which it was used.  There was also indubitable evidence regarding the recognition of  that mark as indicating origin on the part of that section of the public who buy these goods in the course of trade or for



748 consumption.   Thus the finding was that by  reputation  the mark had come to denote the goods of the Besides. the  words were  not a merely laudatory expression in relation  to  the goods, but descriptive though as such they would prima facie not  be distinctive.  Length of user would, of course, be  a material  factor for the mark to become distinctive and  the learned  District Judge found that by such a long  user  the mark had become exclusively associated with the goods of the respondent in the market. Though  the learned Judges of the High Court have  not  dis- cussed  this question in their judgment, they have  affirmed in  general terms the conclusions recorded by  the  District Judge on this point.  There being concurrent findings on the question  as to whether the respondent’s mark  has  acquired distinctiveness  as  a matter of fact, and  there  being  no error  of law in the criteria applied for reaching them,  it would  not  be  open  to  the  appellant  to  challenge  the correctness of that finding and, indeed, learned Counsel for the  appellant did not attempt to do so.  What he,  however, submitted  was that on a proper construction of the  proviso to  s.  6(3) of the Act marks which from their  very  nature were inherently incapable of acquiring distinctiveness could not qualify for registration and the Courts below  therefore erred  in  holding the marks which because  of  their  being descriptive  of  the  goods  were  inherently  incapable  of registration, to be registrable. This   takes   us  to  the  consideration  of   the   proper construction   of  the  proviso.   Closely   examined,   the arguments  of the learned Counsel on this matter boils  down to  this  that  the proviso really  did  not  introduce  any standard  of distinctiveness different from that  which  had been provided by the terms of S. 6(1) as explained by sub-s. (2)  and  the main part of sub-s. (3); in other  words,  the submission was that in cases where the mark fell within  the prohibition  of cl. (d) of sub-s. (1) it could  not  qualify for registration on the basis of acquired distinctiveness by long  user as an "old mark" i.e., from before  February  25, 1937.   In  support of this submission the  learned  Counsel relied on the view expressed by Mr. S. Venkateswaran in  his comments  on  S. 6(3) at pages 152-154 of  his  Treatise  on Trade  Mark  Act  1940 which view  he  submitted  had  found judicial  acceptance  in a decision ,of  the  Calcutta  High Court  reported  as In the matter of  India  Electric  Works Ltd.(1) (1)  49 C.W.N. 425.                             749 Before  proceeding  further we should, add what there  is  a decision of the Allahabad High Court in Ram Rekhpal v. Amrit Dhara Pharmacy(1) in which the question of the  construction of  the  proviso  came up for  consideration.   The  learned Judges,  however,  without  any  discussion  of  the  points involved, expressed their opinion that even if the mark came within the prohibition in cl. (d) of sub-s. (1) of s. 6,  an old  mark i.e., marks in use from before February  25,  1937 would  qualify  for registration if there  was  evidence  of factual a  distinctiveness. This decision has been  referred to  and relied on by the learned District Judge in the  case before  us; but as it does not contain any reasons  for  the decision, it may be omitted from consideration. The  main  part  of  the  learned  Counsel’s  submission  as regards,  the construction of the proviso was based  on  the comment  in  Mr. S. Venkateswaraies treatise  which  learned Counsel  adopted’  as  part  of  his  argument.  no  primary requisite for attracting the proviso is that the trade  mark



must  have  been continuously used in relation to  the  same goods as those in relation to which registration is  applied for  from a period prior to February 25, 1937.  It  is  true that  in the present case the relevant mark as  used  before February 25, 1937 was "Navaratna Pharmacy" and’ the mark now on the register the validity of whose registration under the Trade Marks Act is in question is "Navaratna  Pharmaceutical Laboratories".   But it would be noticed that by  the  words within  the brackets in the proviso marks "either  in  their original   form  or  with  additions  or   alterations   not substantially  affecting  its  identity"  qualify  for   the special  privileges  accorded’  to old marks.   It  was  not contended before the Courts below or before us that the mark now in question did not satisfy this test when compared with that  which the respondent was using prior to  February  25, 1937.    This   being  conceded,  the  only   question   for consideration  is whether the last part of the proviso  that the  Registrar may accept evidence of acquired  distinctive- ness  as entitling a mark for  registration  notwithstanding the fact that "the trade mark is not adapted to  distinguish as aforesaid", could apply to cases where the trade mark has a direct reference to the character or quality of the  goods or is otherwise not qualified for registration under  cl.(d) of sub-s. (1).  The entire argument on this part of the case is  merely based on the use of the expressions  ’adapted  to distinguish  as  aforesaid’  and  ’distinctiveness’  in  the concluding portion of the proviso.  It was not disputed that on the words of the proviso when the Registrar- (1)A.I.R. 1957 All. 683. 750 recorded a finding that the mark submitted for  registration was "not adapted to distinguish as aforesaid", that is, that the  mark  did  not fulfill the requirements  of  the  tests suggested by the main part of sub-s. (3), he was  authorised to    permit   evidence   being   led   as   to    "acquired distinctiveness"  and to register the mark, if the  evidence satisfied  him on this point.  It was, however,  urged  that the word ’distinctiveness’ in the expression "acquired  dis- tinctiveness" had to be understood in the sense in which  it is  defined  in  sub-s.  (2) where  it  is  stated  to  mean practically "  adapted to distinguish", the content and  the significance  of  which is elaborated in  sub-s.  (3).   The submission  was that at that stage, when accepting  evidence of acquired distinctiveness one is again thrown back on sub- ss.  (2) and (3), with the result that unless the  tests  of distinctiveness and of "adaptation to distinguish" which are explained in sub-ss. (2) and (3) are satisfied, no amount of evidence  led  before  the  Registrar  of  factual  acquired distinctiveness  would suffice to permit  registration.   In other  words, the argument was that if a mark was one  which was  prohibited from being registered under s. 6 (1  )  (d), that   ban  which  is  not  lifted  by  proof  of   acquired distinctiveness in the case of new marks not falling  within the  proviso is not lifted either in the case of  old  marks which  had  been in use continuously as a  trade  mark  from before  February  25, 1937.  It would be seen that  if  this argument  were  accepted, the proviso adds  nothing  to  the section  and  makes no variation in the law as  regards  old marks  which  had been in use continuously from  before  the specified  date.  It would also make meaningless  the  words ’shall  not refuse registration’ by reason only of the  fact that  the  trade  mark  is  not  ’adapted  to   distinguish’ occurring   in   the  proviso.   It  was  said   that   this construction  which  would render the proviso otiose  and  a futility was necessitated by the opening words of sub-s. (2)



where  the  definition of the expression  "distinctive"  was said  to be "for the purposes of this section and  that  the proviso  to the sub-section being part of the  section,  the words  there had to be understood in the sense defined.   We feel unable toaccept this construction, nor do we read  the opening words ofsub-s.  (2)  as necessarily  leading  to this result. Briefly stated,"distinctive"  is  defined  in sub-s. (2) as "adapted to distinguish" and the latter phrase explained in language which might exclude what is  negatived by  S.  6 (1 ) (d).  But that, however, does not  solve  the problem  created  by  the words of the  proviso  "Shall  not refuse  registration  by reason only of the  fact  that  the trade mark is not adapted to distinguish as aforesaid".  The use of the words "as aforesaid" takes one back first to sub- s. 751 (3)  and then on to sub-s. (2). and necessarily also to  the provision in s. 6(1) (d) where marks which are incapable  of acquiring distinctiveness are dealt with.  Hence even on the terms of the proviso, however construed, it is not  possible to  escape the conclusion that a mark which is not  "adapted to distinguish" by the application of the tests laid down in s.  6(1)  could still qualify for registration by  proof  of acquired distinctiveness. For  the present purpose it is unnecessary to enter into  an examination  of the general nature of a proviso and  of  its function in statutes.  It is sufficient to point out that it would not be a reasonable construction of any statute to say that  a  proviso  which  in  terms  purports  to  create  an exception  and seeks to confer certain special rights  on  a particular  class of cases included in it should be held  to be otiose and to have achieved nothing merely because of the word  ’distinctiveness’  used in it which has  been  defined elsewhere.  A construction which would lead to old marks and new  marks  being  placed  on the  same  footing  and  being subjected  to the same tests for registrability  cannot,  in our opinion, be accepted. In  this connection, some support was sought for  the  cons- truction  pressed  upon us by the learned  Counsel  for  the appellants by reference to s. 20 of the Act which reads :               "(1) No person shall be entitled to  institute               any  proceeding  to  prevent,  or  to  recover               damages   for,   the   infringement   of    an               unregistered trade mark unless such trade mark               has been continuously in use since before  the               25th day of February, 1937, by such person  or               by a predecessor in title of his and unless an               application for its registration, made  within               five years from the commencement of this  Act,               has been refused; and the Registrar shall,  on               application in the prescribed manner, grant  a               certificate  that  such application  has  been               refused.               (2)Nothing  in  this Act shall  be  deemed  to               affect rights of action against any person for               passing  off  goods as the  goods  of  another               person or the remedies in respect thereof." It was urged that if every mark which had been in use prior, to  February 25, 1937 qualified for registration  under  the proviso to s. 6(3), there could really be no cases where the Registrar  could refuse registration, with the  result  that the contingency contemplated by s. 20 of the Act could never arise.  This was 752 stated  to  support the construction of  the  proviso  which



learned  Counsel commended for our acceptance.  Here  again, we do not see any substance in this argument.  A mark  might have been used even prior to February 25, 1937; but it might not quality for registration under the proviso to S. 6(3) by not  having acquired that degree of factual  distinctiveness which the Registrar considers is sufficient to enable it  to qualify  for  registration.   It is  therefore  possible  to conceive of cases where even if the proviso to S. 6(3)  were construed  in the manner in which we ’have indicated,  there would still be scope for the rejection by the Registrar of a trade mark in use prior to the specified date.  That in  our opinion, is the true ratio of the decision of McNair, J.  in India Electric Works Ltd.(1) on which Mr. Agarwala relied in this connection. The  Court was there concerned with an appeal from an  order of the Registrar refusing registration in respect of an  old mark.  The mark in question was the word ’India’ as  applied to  electric ’fans.  The learned Judge dismissed the  appeal on the ground that the word ’India’ was a geographical  word and  therefore  -would not qualify  for  registration  being prohibited  by  S.  6  (1)  (d).   The  learned  Judge  also considered whether the mark could ’qualify for  registration under the proviso.  The conclusion -reached on this part  of the case was that the applicant had not established  factual acquired  distinctiveness to qualify for  registration,  and that  the Registrar was therefore right in the finding  that he  recorded  on this matter.  Proof of  user,  the  learned Judge   hold,   was  not  ipso  jure   proof   of   acquired distinctiveness  ’and this is obviously right and  does  not advance  the  appellant’s  submission  in  regard  to   this question.  Though there are some observations which might be wider, it substantially proceeded on ,accepting the  finding of  the Registrar regarding the applicant ’having failed  to establish  factual  acquired distinctiveness for  his  mark. That case therefore does not assist the learned Counsel  for the  construction that he seeks to put on the proviso to  s. 6(3). As  we  have  pointed  out  earlier,  there  are  concurrent findings  of fact on this point that through long user  from 1926 onwards, -the mark had become associated exclusively in the market with the pharmaceutical products manufactured  by the  respondent.   The  finding  is  not  capable  of  being challenged before us and was not, -in fact, attempted to  be challenged.  From this it would follow that the  respondents mark was rightly registered and that ,(1) 49 C.W.N. 42. 753 he  was  entitled  to protect an invasion of  his  right  by seeking  a  perpetual injunction from  persons  who  invaded those rights. The  next part of the learned Counsel’s argument related  to the  question whether the Trade Mark used by  the  appellant viz.,  ‘Navaratna Pharmacy’ "so nearly resembled  the  trade mark  of the respondent as to be likely to deceive or  cause confusion  in the course of trade" within s. 21 of the  Act. The mark is not identical and so the question is whether the appellant’s mark is deceptively similar to the respondent’s. On  this matter also, there are concurrent findings  of  the Courts  below regarding the deceptive similarity of the  two marks.   That the words ’Navaratna Pharmacy’ and  ’Navaratna Pharmaceutical Laboratories’ are similar in the sense spoken of by s. 21 does not appear to us to be of much doubt.   But the  learned Counsel’s submissions were two-fold:  (1)  that the  Courts below had found that the word ’Navaratna’ was  a word  in common use in the trade in  Ayurvedic  preparations and  the courts rightly held the respondent could not  claim



exclusive  rights to the use of that word in the  mark.   In these circumstances, Mr. Agarwala submitted that the  Courts below   should  have  insisted  on  either  the   respondent disclaiming exclusive rights to the word ’Navaratna’ in  the trade  mark ’Navaratna Pharmaceutical Laboratories’ or  that the  disclaimer should have been ordered as a  condition  of the trade mark remaining on the register under s. 13 of  the Act.,  (2)  The finding by the Courts below that  the  marks were  deceptively  similar  was  directly  contrary  to  and inconsistent  with  their finding that the  packing,  label, get-up  etc., in which the appellant’s goods  were  marketed was  not  likely  to cause any confusion in  the  market  or deceive  any purchasers, wary or otherwise on the  basis  of which the claim for passing off was rejected. As regards the first contention regarding disclaimer and the reference to s. 13, the matter stands thus.  Under the terms of  s.  13 of the Act, an order directing  disclaimer  could have  been passed only by the High Court when- dealing  with the appellant’s application under s. 46 (2) of the Act.  The application  that he filed contained no prayer to  direct  a disclaimer,  and no submission appears to have been made  to the  High Court when dealing with the petition or even  with the  appeal  that  the  respondent  should  be  directed  to disclaim.   In  these circumstances, we do not  consider  it proper to permit the appellant to urge this argument  before us. 754 The  other  ground  of  objection  that  the  findings   are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right  to relief  in suits for passing off and for infringement  of  a registered  trade mark and in equating the essentials  of  a passing  off  action  with those in  respect  of  an  action complaining  of an infringement of a registered trade  mark. We have already pointed out that the suit by the  respondent complained both of an invasion of a statutory right under s. 21  in  respect  of a registered trade mark and  also  of  a passing  off  by the use of the same mark.  The  finding  in favour  of the appellant to which the learned  Counsel  drew our attention was based upon dissimilarity of the packing in which  the  goods  of  the  two  parties  were  vended,  the difference in the physical appearance of the two packets  by reason  of the variation in their colour and other  features and their general get-up together with the circumstance that the name and address of the manufacture of the appellant was prominently displayed on his packets and these features were all  set out for negativing the respondent’s claim that  the appellant  had  passed  off  his  goods  as  those  of   the respondent.   These matters which are of the essence of  the cause of action for relief on the ground of passing off play but  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 who has a statutory  remedy in  the  event  of  the use by another of  that  mark  or  a colourable  imitation thereof.  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 (Vide s. 21 of the Act).  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,   the plaintiff  must,  no  doubt, make out that the  use  of  the defendant’s  mark  is  likely  to  deceive,  but  where  the similarity 755 between the plaintiff’s and the defendants mark is so  close either  visually,  phonetically or otherwise and  the  court reaches  the  .conclusion  that there is  an  imitation,  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. When  once  the use by the defendant of the  mark  which  is claimed  to infringe the plaintiffs mark is shown to be  "in the course of trade,, the question whether there has been an infringement  is  to  be decided by comparison  of  the  two marks.   Where  the  two  marks  are  identical  no  further questions  arise;  for then the infringement  is  made  out. When  the two marks are not identical, the, plaintiff  would have  to  establish that the mark used by the  defendant  so nearly resembles the plaintiffs registered trade mark as  is likely  to  deceive or cause confusion and  in  relation  to goods in respect of which it is registered (Vide s. 21).   A point has sometimes been raised as to whether the words  "or cause confusion" introduce any element which is not  already covered  by  the  words  "likely  to  deceive"  and  it  has sometimes  been  answered  by saying that it  is  merely  an extension  of  the  earlier  test  and  does  not  add  very materially  to  the concept indicated by the  earlier  words "likely to deceive".  But this apart, as the question arises in  an  action  for infringement the onus would  be  on  the plaintiff  to  establish  that the trade mark  used  by  the defendant in the course of trade in the goods in respect  of which his mark is registered, is deceptively similar.   This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to  exist to cause deception not being capable of definition by laying down objective standards.  The persons who would be deceived are,  of course, the purchasers of the goods and it  is  the likelihood  of their being deceived that is the  subject  of consideration.   The resemblance may be phonetic, visual  or in  the basic idea represented by the plaintiffs mark.   The purpose  of  the comparison is for determining  whether  the essential  features of the plaintiff’s trade mark are to  be found in that used by the defendant.  The identification  of the essential features of the mark is in essence p./65-5 756 a question of fact and depends on the judgment of the  Court based on the evidence led before it as regards the usage  of



the  trade.  It should, however, be borne in mind  that  the object  of the enquiry in ultimate analysis is  whether  the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. The  mark  of the respondent which he claims  has  been  in- fringed   by   the   appellant  is   the   mark   ’Navaratna Pharmaceutical Laboratories’, and the mark of the  appellant which  the respondent claimed was a colourable imitation  of that  mark is ’Navaratna Pharmacy.  Mr. Agarwala here  again stressed the fact that the ’Navaratna’ which constituted  an essential part or feature of the Registered Trade Mark was a descriptive  word in common use and that if the use of  this word  in the appellant’s mark were disregarded, there  would not  be enough material left for holding that the  appellant had used a trade mark which was deceptively similar to  that of  the respondent.  But this proceeds, in our  opinion,  on ignoring  that  the appellant is not, as we  have  explained earlier,  entitled to insist on a disclaimer, in  regard  to that  word by the respondent.  In these  circumstances,  the trade mark to be compared with that used by the appellant is the  entire registered mark including the word  ’Navaratna’. Even   otherwise,   as  stated  in  a   slightly   different context:(1)               "Where common marks are included in the  trade               marks  to be compared or in one of  them,  the               proper  course  is  to look at  the  marks  as               wholes  and not to disregard the  parts  which               are common". It  appears to us that the conclusion reached by the  Courts below  that  the appellants mark is deceptively  similar  to that  of the respondents cannot be stated to  be  erroneous. Besides, this question of deceptive similarity is a question of fact, unless the test employed for determining it suffers from error.  In the present case, it was not suggested  that the Courts below had committed any error in laying down  the principles  on  which  the comparison has  to  be  made  and deceptive  similarity ascertained. (See per Lord  Watson  in Attorney-General  for  the Dominion of Canada  v.  Attorney- General  for  Ontario etc.) (2) . As  there  are  concurrent findings of fact on this matter, we do not propose to  enter into  a  discussion of this question de novo, since  we  are satisfied that the conclusion reached is not unreasonable. (1) Kerly on Trade Marks 8th Edn. 407.  (2) [1897] A.C. 199.                             757 Lastly it was submitted that this was a case of honest  con- current  user within s. 10(2) of the Act.  This  point  was, however, not raised in any of the Courts below and we do not propose to entertain it for the first time in this Court. The result is, the appeals are dismissed with costs-one  set of hearing fee.                              Appeals dismissed. 758