# Gorn Proaucts Refi11ing Oo v. Bhangrila Fooii ProiiucllJ - **Citation:** [1963] 2 S.C.R. 484 - **Court:** Supreme Court of India - **Decided:** 1963 - **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/gorn-proaucts-refi11ing-oo-v-bhangrila-fooii-proiiucllj-2508 - **Pages:** 15 ## Headnote 1962 April 27, / - ~ >---;-- 484 SUPREME COURT REPORTS [1963)- AMRITDHARA · PHARMACY \ !), SATYADEO GUPTA -(S. K. DAS, Jl.1~ HmAYATULLAH and J.C. SHAH, JJ.) Trade Marlc--Likel!f to Recefre or Approach to determint-Acquiescence-E!fect · Act, 1940 (V. of 1940), ss.8, 10. cause conjusionoj-Trat!e Marks The respondent applied for registration of the trade name ''Lakshmandhara'' in relation to the medicinal preparation manufactured by him at Kanpur since 1923. It was. admitted that the respondent's product was mainly sold in the ,State of Uttar Pradesh .. The appellant opposed the regis- . tration on the ground that it had. an exclusive proprietary iriterest in the trade mark "Amritdhara ,,_in relation to a similar medicinal. preparation which had acquired considerable reputation since 1903 and that the respondent's trade· name "Lakshmandhara "- was likely to deceive and cause confusion and therefore the registration was prohibited by s; 8 ·of the Trade Marks Act. · The Registrar of Trade Marks held that there was suffi- . cient similarity between "Amritdhara' .and "L~shaman· dhara" so as to cause cOnfusion and it was likely to deceiv~the public; but the acquiescence of the appellant in the use of the trade name "Lakshmandhara" by the respondent in the rela- - tion 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~ He, however, confined the registration to sales with the State of Uttar Pradesh. · Both the appellant and the respondent . appealed to the High Court which allowed the respondent's appeal holding that the words ''Amrit" and "dhara'' were common words in the Hindi language as also the wordS ''Lakshman" and "dhara" · and that there was no possibility of any Indian confusing the two ideas. The High Court further held there had been honest concmrent user by the respondent. o.n the question of acquiescence it held against the .respondent .. On appeal by special leave. Held, that the question whether a trade name is likely todeceive or cause confusioi;i by its resemblance to another af .. ready registered is a matter of first iII?pres~ion and one for , decision in each case and has to be decided by taking an over- . all view of all the circumstances. The standard of comparison to be adopted in judgivg the resemblance is from the point of .. ,r-'. .... ' , -· 2 s.o.R. SUPREME COURT REPORTS 485 \ view of a man of average Intelligence and imperfect recollection. Pianoti8t Oo.'s Application, (1906) 23 R. P. C. 774, referred to. " · Gorn Proaucts Refi11ing Oo., v. Bhangrila Fooii ProiiucllJ .Lta., (1960] 1 S .. c. R. 968, referred to. · Bela, further, that the two names as a whole should be considered for comparison and not merely the component 'ci, words thereof separately. William Bailey (Birmingham) Ltd.'s application, '(1935) 52 R. P. C. 137, referred to. Bei4, •also, that in the present case the similarity in the two name in respect of the same description of goods was ·likely to deceive or cause confusion; but the fact. found by the Registrar established the plea of acquiescence so a to bring the case within sub-s.(2) of s. IO, and the Registrar was right in imposing the limitation which he imposed. Crvn. APPELLATE JUBISDioTION: Civil Appeal No. 22 of 1960. Appeal by .special leave from the judgment and order dated March 19, 1958, of the Allahabad High Court in F. A. No. 62 of 1954. · S. N. .Andley, Rameskwar Nath and P. L. Vohra, ·for the appellant. · G. 8. Pathak, 8. K. Kapur, B. N. Kirpal a.nd Ganpat Rai, for the respondent. _, 1962. April 27. The Judgment of the Court was delivered by · S. K. D.A.s, J.-This is an appeal by special leave granted by · this Court on December 8, 1958. On July 19, 1950, Satya Deo Gupta, respondent before us; made an applioation under s. 14 of the Trade Marks Act, 1940 (Act V of 1 1940) (h~reinafter referred to as the Act) for registration of the tr ## Text 1962 April 27, / - ~ >---;-- 484 SUPREME COURT REPORTS [1963)- AMRITDHARA · PHARMACY \ !), SATYADEO GUPTA -(S. K. DAS, Jl.1~ HmAYATULLAH and J.C. SHAH, JJ.) Trade Marlc--Likel!f to Recefre or Approach to determint-Acquiescence-E!fect · Act, 1940 (V. of 1940), ss.8, 10. cause conjusionoj-Trat!e Marks The respondent applied for registration of the trade name ''Lakshmandhara'' in relation to the medicinal preparation manufactured by him at Kanpur since 1923. It was. admitted that the respondent's product was mainly sold in the ,State of Uttar Pradesh .. The appellant opposed the regis- . tration on the ground that it had. an exclusive proprietary iriterest in the trade mark "Amritdhara ,,_in relation to a similar medicinal. preparation which had acquired considerable reputation since 1903 and that the respondent's trade· name "Lakshmandhara "- was likely to deceive and cause confusion and therefore the registration was prohibited by s; 8 ·of the Trade Marks Act. · The Registrar of Trade Marks held that there was suffi- . cient similarity between "Amritdhara' .and "L~shaman· dhara" so as to cause cOnfusion and it was likely to deceiv~the public; but the acquiescence of the appellant in the use of the trade name "Lakshmandhara" by the respondent in the rela- - tion 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~ He, however, confined the registration to sales with the State of Uttar Pradesh. · Both the appellant and the respondent . appealed to the High Court which allowed the respondent's appeal holding that the words ''Amrit" and "dhara'' were common words in the Hindi language as also the wordS ''Lakshman" and "dhara" · and that there was no possibility of any Indian confusing the two ideas. The High Court further held there had been honest concmrent user by the respondent. o.n the question of acquiescence it held against the .respondent .. On appeal by special leave. Held, that the question whether a trade name is likely todeceive or cause confusioi;i by its resemblance to another af .. ready registered is a matter of first iII?pres~ion and one for , decision in each case and has to be decided by taking an over- . all view of all the circumstances. The standard of comparison to be adopted in judgivg the resemblance is from the point of .. ,r-'. .... ' , -· 2 s.o.R. SUPREME COURT REPORTS 485 \ view of a man of average Intelligence and imperfect recollection. Pianoti8t Oo.'s Application, (1906) 23 R. P. C. 774, referred to. " · Gorn Proaucts Refi11ing Oo., v. Bhangrila Fooii ProiiucllJ .Lta., (1960] 1 S .. c. R. 968, referred to. · Bela, further, that the two names as a whole should be considered for comparison and not merely the component 'ci, words thereof separately. William Bailey (Birmingham) Ltd.'s application, '(1935) 52 R. P. C. 137, referred to. Bei4, •also, that in the present case the similarity in the two name in respect of the same description of goods was ·likely to deceive or cause confusion; but the fact. found by the Registrar established the plea of acquiescence so a to bring the case within sub-s.(2) of s. IO, and the Registrar was right in imposing the limitation which he imposed. Crvn. APPELLATE JUBISDioTION: Civil Appeal No. 22 of 1960. Appeal by .special leave from the judgment and order dated March 19, 1958, of the Allahabad High Court in F. A. No. 62 of 1954. · S. N. .Andley, Rameskwar Nath and P. L. Vohra, ·for the appellant. · G. 8. Pathak, 8. K. Kapur, B. N. Kirpal a.nd Ganpat Rai, for the respondent. _, 1962. April 27. The Judgment of the Court was delivered by · S. K. D.A.s, J.-This is an appeal by special leave granted by · this Court on December 8, 1958. On July 19, 1950, Satya Deo Gupta, respondent before us; made an applioation under s. 14 of the Trade Marks Act, 1940 (Act V of 1 1940) (h~reinafter referred to as the Act) for registration of the trade name of a biochemioal medicinal preparation, commonly known as 'Lakshmandhara', iri Class 5 of the Fourth Sohedule to the Trade 1961 --· ~ Phart1Ja~'° Gllf'l• DasJ. 486 SUPn.EME OOURT REPORTS [1963) Marks Rules, 1942. The applioation wae made by the respondent as the sole proprietor of Rup Bilu Company situate at Dhankutti in Kanpur. The averments ma.de in the application were that the &&id medicinal preparation had been in use by the name of 'Lakshma.ndhara' since 1923 and was sold throughout the length and breadth of India ae also in some foreign markets; the mark or name 'Lakshmandha.ra' wae said to be distinctive to the article, and it was stated that the approximate B11Dual turnover was Rs. 40,000/-. Notice of the application was given by the Registrar of Trade Marks, Bombay, and the Amritdbara Pharmacy, a limited liability company and appellant before us, filed an application in opposition. In this application the appellant stated that the word 'Amritdhara' was already registered as a trade name for the medicinal preparation · of the appellant, and that medicinal preparation was introduced in the market so far back &11 in the year 1901; on aocount of its great popularity many people advertised similar medicines with alight variations of name to pass off their goodB ae 'Amritdbara'. It was averred that the composite word 'Lakshmandhara' was used to denote the same medicine as 'Amritr dhara'; and the single word "dhara', it was stated, was first used in conjunction with •Amritdhara' to denote tho medicine of the appellant and the medicine 'Lakshmandhara' being of the 88.llle nature and to quality could be easily (>M8ed off' as 'Anirit- , dhara' to. the ultimate purchaser. The appellant oontended that as • Amritdhara' was already regilr tered and 'Lakahmandhara' being a aimilar name was likely to reoeive the public, registration .ahould be reflll6d. On behalf of the respondent a counter-affidavit was ma.de in which it was stated that 'Amritdhara' ' · and •l.alrahmandhara' were two diatmot.ly different DAmeB ud no one eould pue off one for the other. l 2 S.C.R. SUPREME COURT REPORTS 487 It was further stated that during.the long period of °" introduction and sale of 'Lakshmandhara' since 1923, no objection was ·ever raised from any quarter, from the appellant or anybody else, to the use of the name •Lakshmaudha.ra'. It was denied by the respondent that the composite word 'La.kshmandhara' was likely to deceive the public or could by any stretch of imagination be taken or mistaken for 'Amritdhara'. The respondent further .J.. al1 1 ege~ t~fiat the. sing 1 le :wordt 'dhthara' had~ ~o particu a.r s1gm cance m re at10n o · e me 1cmc, nor .did that word mean or convey any special or exclusive meaning or effect in relation to the medicine. It. was also stated that apart from the difference in name, the phial, label and packing of 'La.kshmandhara.' had exclusive designs of their own and were not likely to be confused with any other medicine of similar nature, least of all with 'Arnritdhara' whose packing was distinctly r!ifforcnt in colour, design and layout. · " The Registrar of Trade Marks deaU with the >- application, and th£1 opposition thereto by his order dated September I 0, l!l53. It appears that apart from the affidavits filed, no ether evidence was led on behalf of either party; but certified copies of certain decisions in earlier cases (to which the respondent was not, however, a party) given in favour of the appellant in support. of its claim of infringement of its rPgistered trade mark • Amrit- ~ dhara' were fikd. A list 'of surh cases has been printed as annexure 'A': These cases showed that a number of medicines with the word •Amrit' or 'dhara' as part of their names had bet'n introduced in the market since l!l47; and the appellant successfully took action against them for infringement of its trade mark. ~ven in the Trado Marks _ '1. Registry the appellant successfully opposed the introduction of names which contained the word •dbara' as pa.rt of the trade name. A question bu. 1961 Amrild/1ara Pliarm«e.;1 v. Saf,Jtdto Gupta D41J, 11161 Amrilrih11 • P,,.f"mOC) v. Se&,..,.. Gu71'1 Dis .T. 488 SUPREME OOURT REPORTS [1963] been rallied before us whether the Registrar of ., Trade Marks was justified in ta.king into considtJre.· tion tl1e decisions in those cases. To that question we aha.II advert later. Tbe Registrar found that in 1901 Pandit Thakur Datta Sharma commenced to do business at Lahore in a particular a.yurvedio medicine which was meant for a.lloviation for of hea.daches, diarrohea, constipatfon and other complaints. This medicine was first sold undor the mark 'Amrit Ki Dhara', ~ but in 1903 the name was changetl to •Amritdhara.', Pandit Thakur Datta Sharma formed a. limited lia· bility company in 1942 and the name •Amritdhara.' became a well-known popular namo for the medicine. The sale of the medicine went up to about Re. 4 lacs a year. The busine88 waR done in La.bore but when partition came in 1947, the appellant established its business in Debra.dun. Tho Registrar exprcBBed tho view the.t if the matt.er had rested on a. 8 ands. lO(l) ()f the Act, he wo·~ld have no hesi· tation in allowing the opposition antl dismissing the application. This could only moan that the Regist· , ra.r was of the view that the name •Lakshmandhara' ao nearly resombled the trade mark 'Amritdhara' tha.t it .wa.s likely to deceive the public or ca.use con· fusion to the trade. Wc are saying this because the High Court through that the Rogistrar did not ex· presij his own opinion whether the nam1i 'Lakshman· dha.ra' was likely to ca.use deception to the public or confusion to the trade. The rcsp(Jnd<'nt, how· ever, relied also on two other circumstances, viz. • (a) honest concurrent Uder o[ the name •Lakshme.n· dhe.ra.' since 1923, and (b) e.cquit•scenco on the part of the a.ppella.nt in the user of the name 'La.kshman· dha.ra.'. The respondent contend~d that these two circumstances brought the ca8c with in the meaning of 'SpC'cial circumstances' in H.' 10(2) of the Act, which permitted the registra.tion by more than one " ·~ proprietot- of trade !Qarke which 're identiC!Fol or 2 s.c.R. SUPREME OOURT REl?OR.Ts 489 nearly resemble each other, subject to such oondi· tion and limitations, if any, as the Registrar might 'I think fit to impose. On the point of honest concurrent user the Regi~trar found in favour of the appellant. As to acquiescence he, however, ·found in favour of the respondent and expressed his finding in these words. • "In the case before me it is not disputed that t.he applicant commenced his user in a small way in 1923 and it may even be said that up to about 1942 the applicant's u11er was insignificant. In paragraph 12 of the applicant's affidavit dated the 30th March, 1953 he has given details of advertisements in directories, pamphlets, newspapers etc. in which both the applicant's and the opponents' marks were advertised. The facts given in the affidavit go to show that from 1938 right up to the date of the applications by the applicant he has been advertising through mediums which were common to both the applicant and tbe opponents. Here we have a case in which Pandit Thakur Datta Sharma states that. he had no notice of the applicant's mark. He has, how- · ever, admitted that he had about 12 persona in his factory which constituted the clerical staff and amongst them were persons who were in charge of advertising the opponents' mark. It seems to me that the opponents and their agents were well aware of the advertisem!"Jts by the applicant and did not raise any protest till the applicant's mark was adverti& ed in the Trade Mark Journal. In other words the opponents stood by and. allowed the applicant to develop his business and, as I have shown, from small heginning be began to · sell these medicines to the extent of about Rs. 43,000/- in 1949. In my opinion, th.is is 1911 -. - """''""- Plu~r111ecy y, Sti.lyatleo Gupta ,,., J, -- Amtikih~a Plurmac.1 •• 8 ":l'.Jro Cupid V"J J, 490 SUPREME OOURT REPORTS [1963] acquiescence which would come under the phrase 'or other special circumstances' in section 10(2) of the Trade Marks Act, and that appears to me to Ix> fatal to the case of the opponents." Btfore the RegiHtrar it was admitted on behalf of the respondent that hiR goodR were sold mainly in Uttar Pradrsh and there were, at the most, only sporadic sales in ot.hcr States. Taking that circumstance into consiclera.tion the R.ogistrar p1111sed an order allowing regi~tra.tion of 'Lakshmandhara' for sale in the State of l!ttar Prade~h only. From the decision uf t.h" Registrar two appeals were referred to the High Court of Judicature at Allahabad under s. i6 of the Act: one appeal wBB referred by the respondent and the other by the appellant. The respondent complained of the registration being limited to Uttar Pradesh only and the appellant pleaded that rcgis' ration should have been refused altogether. The learned Judges of the High Court held that the wordd 'Amrit' and 'dhara' were common words in the Hindi langua.go and the combined word •AmritoI• -- DtuJ. 1951 AntritdluJr• Pltartn«7 v. S.t:1atho Gitf>ta 494 SUPREME COURT REPORTs [llH!3] For deoeptive resemblance two important questions are: ( 1) who are the persons whom the resemblanoe must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods whioh he has previously bought, but is doubtful whether that impreBllion is not due to imperfect recollt,ction. (See Kerly on 'frade Marks, 8th edition, p. 400.) Let us apply theee tests to the facts of the case under our consideration. It iR not disputed beforo us that the two names 'Amritdha.ra.' and •L:i.kshmandhara.' a.re in uee in respect of the ea.me description of goods, namely, a medicinal preparation for the alleviation of various ailments. Suoh medicinal preparation will be purchased mostly b~ people wh~ instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products ReJining Co. v. Shangril,a Food Products Ltd. (1), the question bas to be approached from the point of view of a man of average intelligence and imperfoot recollection. To such a man the overall structural and phonetic gimilarity of the two names • Amritdhara' and •Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Laksbman. dhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one fo~ the other. Ao unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and OOll8ider the et.ymological JQeaning thel'llo( ot ( l).lUliO] I &C.R. 9(8. , I -. .. ' \ ·-,.;(_ ---- 2 S.C.R. _SUPREME COURT REPORTS 495 even consider the mep.nings of the _composite words .as ~current .of nectar' or-'current of Lakshman'. He. would g~ more by_ the overall structural · and phonetic similarity and_ the na.ture-of the medicine be ha.a previously purcha.s~d . or ha.'S been told .about, or about whioh ha.s othc•r .d8~ learnt, and. which he wanti. to purcha.sei. Whe.re ·the trade ·relates to gt>0cls lar~ely sold to. illiterate or badly -educA.ted persons, it is np answer to S\l.Y that a. person educated in the Hindi language would go by 'the entymological or ideological meaning and, -see ' the difference between 'current of nectar' and 'current of Lak~hma.n'. 'Current of Lakshma.n in a literal sense has no meaning to ~ive it mea.n· ing one must further make the inference that the •current or stream' is as . pure and strona as La.kshman of the .Ramayana. An ordinary Indian villa(?er or townsmen will perhaps· know haksb· man, the story of the R'l.maya.na being familiar to him, but we rloubt if he would etymologine to the -extent of seeiAg the so called ideoJogioal difference between 'Amritdha.ra' and •La.kshma.odhara'. He would go more by the similarity of the two names in the context of the widely known ·medicinal preparation which he wants for his ailm~nts. · We agree that the use of th~ word 'dhara' -which literally means 'c·1rrent or stream' is not by itself· decisive of the .matter. What we have to .consider here· is the overall similarity of the comp0 • -site ~ords, having regard to the ciroumstanoe that the goods bearing the two nan:ies_ ate. medioinar preparations of the same descr1pt1on: We ar .aware that the admission of a mark is not to J refused, -because unu~ually stup~d. people, "f?o1s h.... idiots", may be deceived. A cr1t1cal oomparISon ~(" the two names may disclose some points of differen• -ce; but an unwary pnrcbas.,r of average iotelligenoo and imperfect recollection wou~d be deceived by the .overall similarity of the two names having regard 1962 .dniritdhaM Phatmae., ' v. ' '(' abculeo 011Jfa Dasi. An.,iJJ•ara />h"""" of the medicine he is looking for with a ROmewhat vague recollection that he had purrhaeed a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing-the whole word has to be conaidered. Jn the case of the application to register 'Ereotiks' (opposed by the proprietol'8 of the trade mark. •Erector') Far\\ ell, J. said in William Bailey (Birmingham) Ltd.'s Application (1) : "I do not think it is right to take a part of the word and compare it with a part oi theother word; one word must be considered as a whole and compared with the other word as a whole, ......••.••.... 1 think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word". Nor do we think that the High Court was right in thinking that the appellant was claiminll a monopoly in the common Hindi word 'dhara'. We do not think that is quite the position here. What the appellant is claiming is its right under s. 21 of the Act, the exclusive right to the use of its trade mark, and to oppose the registration of a trade mark which ao nearly resembles its trade mark that it is likely to deceive or cause confusion. A large number of decision& relating to thfl nee of composite words, such as Night Cap and Red Cap, Limit and Summit, Rito and Lito, Notrate and Filtrate, etc. were cited in the High Court. Some more have been cited before us. Such decisions, examples of deceptive resemblance arising oui of contrasted words, have been summarised at pag& 429 to 434 in Karly on Trade Marks, 8th Edition. No useful purpose will be served by referring to them all. As we have said earlier, each caae must be decided or its o-WU fact. What degree of (I) (1935) 52 R.P.C. 137. • • 2 $.C.R. SUPREME COURT REPORTS 497 resemblance iii necesl!&ry to dll Act as showing the particular instances in which the appellant claimed its ri1tht under 8. 21 of the Act. We consider it unneoeBSary to decide this question for the purposes of this case because those decisions even if they are admiBBible under s. ~3 do not throw any light on the question whether· •Amritdhara' a.nd 'Lakshmandhara' so nearly resemble each oth~r as to cause deception or confusion. That is a question which we must determine as a case of first impression and irrespective of the earlier decisions. On a consideration of all the circumstances, we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of e. 10(1) of the Act and Registrar was right in the view be expressed. The High Court was in . error taking a contrary view. We now go the second question, that of acquiescence. Here again we are in Bgreem11nt with thti Registrar of Trade 'Marks, who in a paragraph of hie order quoted earlier iri this judgment has summarised the facts and circu111stances on which the plea ofacquiescen~e was based. The matter bas been put thus in Halabury's Lawe of England, Vol. 32 (second edition) pages 659-657, paragraph 966. · " H a trader allows another person who is acting in good faith to build up a reputa· i'6i .d""'- PAo....Qo .. S•IJ•ln a.."' --.-. DalJ. 1962 A11.ri·d~ata P.\orm .. cy v. Sci/,Jotko G"'p:a f'.QJ J. 498 SUPREME OOURT REPORTS (1963) tion under a trade name or mark to which he has rights, he may lose his right to comp· lain, and may even be debarred from him· ,.. self using su<'h name or work. But even long user by another, if fratidulant, does not affect the plaintiff's right to a. final injunction; on the other hand prompt warning or action before the defendant has built up any goodwill may materially assist the plaintiff's case". We do not think that there was any fraudulent user by the respnndent of his trade name •La.kshman· dha.ra'. The name was first used in 1923 in a. small way in Utta.r Pradesh. Later it was more exten· sively used and in the same journals the two trade murks were public-ised. Tht- finding .. of the Registrar is that the appellant and it1< a!!ent were well aware of the advertisemt>nta (of the respondent, and tho appellant stood by and allowed the respondent to develop his busine88 till it grew from a ~ma.II beF,inning in 1923 to an annual turnover of RI!. 43,000/· in 1946. 'T'hese circumHtances establish the plea of acquiescence and bring the ca.s" within sub-a. (2) of s. 10, and in yiew of the a.dmi•Bion made on bebalf of the respondent that his goods were sold ma.inly in Utta.r Pradesh, the Registrar WM right in imposing the limitation which he imposed. For these reasons, we would allow the appeal, set aside the Judgment and order of the High Court, and restore those of the Rt-gistra.r of Trade Marks, Bombay, dated Septemoor 10. 1953. In the <'ircumstances of this case, there will be no order for costs. Appeal allowed. .. • •