# KAVIRAJ PANDIT DURGA DUIT SHARMA v. NAV ARATNA PHAR IACEUTICAL LABORATORIES

- **Citation:** [1965] 1 S.C.R. 737
- **Court:** Supreme Court of India
- **Decided:** 1964-10-20
- **Bench:** P.'B. Gajendragadkar, J. c. SHAH, N. Rajagopala Ayyangar
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/kaviraj-pandit-durga-duit-sharma-v-nav-aratna-phar-iaceutical-laboratories-3246
- **Pages:** 21

## Headnote

'
Trade Morb Act (5 'of 1940), s. 6-Provisa-Scope of-Action for
infringement of trade mark> and action for passing off of good:.-Difference
in factf!TS to be considered.
The respondent, a firm manufacturing medicinal products, was the
proprietor of two registered trade marks .. Na'\'1!'atna" and "'Navaratna
Pharmaceutical Laboratories" from a period prior to 25th February 1937 •. ·
When the appellant, who was also a manufacturer of medicinal preparatiom,
wught the regi•tration of the words "Navaratna Pharmacy" as his trade
mark the r°'pondent objected successfully. The appellant -then moved the
Registrar of Trade Marn for removing from the register, the trade mark
·~avaratna" and for deleting the word .. Navaratna" from the other trade
mark of ohe respondent. The Registrar directed him to move the High
Conrt for the rectification, as the respondent had by that time filed a suit
in the District C.owt for a permanent injunction restraining the appellant
from selling any preparation under a mark containing the word "Navaratna".
The appellant aceordingly filed an original petition in the High Court. The
suit in the District Court was decreed in favour of the respondent with res-
. pect to the . trade mark ,"Navaratna Pharmaceutical Laboratories.'' An
appeal against the decree filed by the appellant, and his Original Petition
were beard together by the High' Court . and the decree of the District
Conrt in favour of the respondent was confirmed. It was held that : (i)
having regard to the method of packing adopted by the appel!ant, he WM
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 wou a
common word in Ayurvedic phraseology and used ·in connection with
several medicinal preparations7 and (iii) the trade name "Navaratna Pharma=itical Laboratories" had been used as a trade mark, by the respon·
dent, for a very long time and had come to denote exclusively bis goods;
and that the trade mark having been in use from before the specified date
February 25, 1937 and having acquired factual distinctiveness, was regi•·
terable under the proviro 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 Laboratories" was validly registerahle was inconsistent with the finding · that
G
""Navaratnan which was tbe
crucial word in the trade mark was only
a. descriptive word in regard to v.rhich the respondent could obtain no exclusive right, and (ii) the finding that the marks of-the aopellant and re•pOn·
dent were deceptively similar was inconsistent with the finding that the
packing in which the appellant's goods were marketed wa. not likely to
cause confusion or deceive purchasers.
·
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HELD : (i) A mark which is not "adapted to distinguish" by the
application of the tests laid down ins. 6(1) of the Act, could still qualify
for registration by virtue of the provi•o to s. 6(3), by proof of acquired
distinctiveness. Under the proviso, with respect to marks in use from a
d2te prior to 25th February 1937, "the Registrar shall not refuse registra-
738
SUPREME COURT REPORTS
(1965] l S.C.R.
lion by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept c'idence of acquired dis_tinc_liven.osa
as enutling the trade mark to rcg1strat1on''. lbe v.·ord "d1st1nct1vcnrM"
cannot mean "adapted LO dhitingu1sh" for then, the proviso \.\''OUld add
nothing to the section and would n1akc no variation in the Jaw as between
new marks and old marks which had been in use continuously from before
the specified date.
A constructicn ,.,.·hich v,:ould 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.
l-lo\\.·c,•cr, a mark might
have been used prior to the spedficd date, but it might not qualify for
registration under the proviso

## Text

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737
KAVIRAJ PANDIT DURGA DUIT SHARMA
v.
NAV ARATNA PHAR.. .. IACEUTICAL LABORATORIES
October 20, 1964
(P.'B. GAJENDRAGADKAR, C.J., J. c. SHAH AND
N. RAJAGOPALA AYYANGAR JJ.)
'
Trade Morb Act (5 'of 1940), s. 6-Provisa-Scope of-Action for
infringement of trade mark> and action for passing off of good:.-Difference
in factf!TS to be considered.
The respondent, a firm manufacturing medicinal products, was the
proprietor of two registered trade marks .. Na'\'1!'atna" and "'Navaratna
Pharmaceutical Laboratories" from a period prior to 25th February 1937 •. ·
When the appellant, who was also a manufacturer of medicinal preparatiom,
wught the regi•tration of the words "Navaratna Pharmacy" as his trade
mark the r°'pondent objected successfully. The appellant -then moved the
Registrar of Trade Marn for removing from the register, the trade mark
·~avaratna" and for deleting the word .. Navaratna" from the other trade
mark of ohe respondent. The Registrar directed him to move the High
Conrt for the rectification, as the respondent had by that time filed a suit
in the District C.owt for a permanent injunction restraining the appellant
from selling any preparation under a mark containing the word "Navaratna".
The appellant aceordingly filed an original petition in the High Court. The
suit in the District Court was decreed in favour of the respondent with res-
. pect to the . trade mark ,"Navaratna Pharmaceutical Laboratories.'' An
appeal against the decree filed by the appellant, and his Original Petition
were beard together by the High' Court . and the decree of the District
Conrt in favour of the respondent was confirmed. It was held that : (i)
having regard to the method of packing adopted by the appel!ant, he WM
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 wou a
common word in Ayurvedic phraseology and used ·in connection with
several medicinal preparations7 and (iii) the trade name "Navaratna Pharma=itical Laboratories" had been used as a trade mark, by the respon·
dent, for a very long time and had come to denote exclusively bis goods;
and that the trade mark having been in use from before the specified date
February 25, 1937 and having acquired factual distinctiveness, was regi•·
terable under the proviro 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 Laboratories" was validly registerahle was inconsistent with the finding · that
G
""Navaratnan which was tbe
crucial word in the trade mark was only
a. descriptive word in regard to v.rhich the respondent could obtain no exclusive right, and (ii) the finding that the marks of-the aopellant and re•pOn·
dent were deceptively similar was inconsistent with the finding that the
packing in which the appellant's goods were marketed wa. not likely to
cause confusion or deceive purchasers.
·
H
HELD : (i) A mark which is not "adapted to distinguish" by the
application of the tests laid down ins. 6(1) of the Act, could still qualify
for registration by virtue of the provi•o to s. 6(3), by proof of acquired
distinctiveness. Under the proviso, with respect to marks in use from a
d2te prior to 25th February 1937, "the Registrar shall not refuse registra-
738
SUPREME COURT REPORTS
(1965] l S.C.R.
lion by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept c'idence of acquired dis_tinc_liven.osa
as enutling the trade mark to rcg1strat1on''. lbe v.·ord "d1st1nct1vcnrM"
cannot mean "adapted LO dhitingu1sh" for then, the proviso \.\''OUld add
nothing to the section and would n1akc no variation in the Jaw as between
new marks and old marks which had been in use continuously from before
the specified date.
A constructicn ,.,.·hich v,:ould 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.
l-lo\\.·c,•cr, a mark might
have been used prior to the spedficd date, but it might not qualify for
registration under the proviso by not having <!Cquired that degree of factual
distinctiveness v.·hich the Registrar considers sufficient to enable it to qualify
for registration.
·1nereforc, v.·hen the Registrar records a finding that the
mark submitted for registration v.·as .. not a<l;1pted to distinguish ru aforosaid", he \vas authoriscJ to permit evidence being led as 10 "acquired distinctiveness".
Since both the trial court and the High Court found that
through long user from 1926 onwards, the mark of the respondcut bad
become associated exclusively in the market with the pharmaceutical pro--
ducts manufactured by him, it would follow that his mark was rightly reP
tcrcd and that he was entitled to protect an invasion of his rights, by seeking
a perpetual injuncti.on against those who invaded them. [744 G; 750 A-C,
E-F; 751 R, D; 752 A-B, G-H; 753 Al
(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 definition by objective s1an<lards.
Vv"hcrc the similarity between the plaintiff's
and defendant"s marks is so close either visually, phonetically or otherwise,
and the Court reaches the cClnclusion that there is an invitation. no funher
evidence is required to establish that the plaintiff's rights are violated. The
fac1 that 1he get up,
packin~ cic., sho"'cd marked differences, or indicate
clearly a trade origin different fro~n lhat of the registered proprietor of the
mark would be in1material.
A finding regarding the packing is rcle-vant
with respect to the relief on the ground of passing off, but plays a limited
role in an action for :nfringemcnt of a registered trade mark by the
registered proprielor v.·ho has a s1atutory rir.;ht to that mark and a statutory
remedy, under s. 21, for \indication of his exclusive right to use it.
The
qu~tion of deceptive similarity is one of fact, unless the test employed
suffers from error this court \\·ould not inlcrfcrc.
In the instant ca~c there
being no such error, the conclusion reached by hath the lov.·er courts
that the appellant's mnrk v.·a:. deceptively similar to that of the respondent, cannot be interfered with. (754 D-F; 755 A-C, F-G; 756 F-Hl
CIVIL APPELLATE h:RISDICTION: Civil Appeals No. 522 and
523 of 1962.
Appeals by special leave from the judgment and order dated
November 30, 1960 of the Kcrala High Court in A. S. No. 233
of 1959 and O.P. No. 19 of 1952.
C. B. Agarwa/a, 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).
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DURGA DUTT v. NAVARATNA LAB. (Ayyangar J.)
739
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The Judgment of the Court was delivered by
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Ayyangar J. These two appeals, by special leave, are concerned 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
C name and style as the Trade Mark now in controversy-"Navaratna Pharmaceutical Laboratories".
As its name mdicates, 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
D cha!1zed to the present one--Navaratna Pharmaceutical Laboratodes.
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 connoti.og the products of the respondentfirm were registered by a declaration of ownership before the
E Registrar of Assurances, Calcutta.
When a Iegislatirm 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, 19'47 and another mark consisting of the words
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'N avaratna Pharmace\ltical 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
G . 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.
Tilere was a
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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
L2Sup./6S--4
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SUPREME
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REPORTS
[1965] IS.CR
Marks Registry at Bombay.
The application was advertised ~.nd
no opposition !iaving been entered, the Trade Mark was registered.
Pausing here, certain focts haw to be set ont in relat;oo to the
aprellant, 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 Ayurvc<lic pharmaceutical
products at J ullundur
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". Whik "" in Oct<)bcr. 1946.
he applied for the registration of the words "l'<avaratna 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 tk worJ
hNavaratna" was descriptive and, having no distinctiveness, could
not be registe•cd.
This objection prevailed and the registration
was refused.
This led to the proceedings which have culminated
in these appeal>.
In tho first instance, the appellant moved the Registrar
of
Trade Marks for removing from the register the trade mari.:
"Navaratna" and the word "Navaratna" in the other mark of the
respondent.
By this date, however, the respondent had filed suit
No. 233 of 1951 (from which C.A. No. 522of1962 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 'Navaratna'
or any similar word etc.
By reason of the pendency of
this
proceeding in which the validity of the registration of the rcspondent'11 mafk was directly involved the Registrar refused his application, and directed the appellant to move the High Court within
wh°'e jurisdiction the District Court was situated for the rectification of the register by deleting the respondent's mark. The appellant accordingly filed 0.P. No. 19 of 1952 in the High Court of
Travancore-Cochin praying
that
the registration of the word
"."lavaratna" 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 pf the order of the
High Court on this petition.
This original petition No. 19 0f
1952 was kept pending in the High Court after it was ready for
bearing and was heard along with the appeal against the decree
of the District Judge in Original Suit No. 233 of 1951.
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DURGA DUTT V, NAVARATNA LAB. (Ayyangar .T.)
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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 "Nnvaratna" and "Navaratna Pharmaceutical Laboratories"
h11.d 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 alleg11.tion that by use of these marks the defendant was passing off
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hi~ goods as those of the plaintiff.
By his written statement the defendant raised principally three
points:
I. (a) .......... That the word "Navaratna" in its etymoD
logical sense meant Ayurvedic preparations of a particular compo~ition 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 l)\J extlusive title to the use of that
word which was a common word for the description of the product
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as a trade mark to designate ils pharmaceutical preparations.
I. (b)
As regards the trade mark "Navaratna Pbannaceutical Laboratories" which was in fact the name in which the plaintiff carried on its business, the defence was that the crucial integer
in that mark was the expression "Navaratna" and that if the plainF
tiff. was not entitled to the exclusive use of the word "Navaratna"
to ·designate its
products,
the combination of the word
with the t\\·o
other words "Pharmaceutical" and Laboratories" which were ordinary English words descriptive of the place
where medicines were prepared could )10t render the trade mark
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a registerable one.
For these two reasons the defence was that
no claim could be made to relief under s. 21 of the Trade Mcuks
Act, 1940.
(2) Next it was submitted that even on the basis that
the
plaintiff was entitled to the use of the word "Navaratna" oither
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alone or in the combination ··Navaratna Pharmaceutical Laboratories", still the use of the trade mark by the de(endant of t8e woJ<ls
"Navaratna Kalpa" and "Navaratna Kalpa Pharmacy" were not
742
SUPREME COURT REPORTS
(1965] 1 S.C.R.
either identical with nor deceptively similar to the plaintiff's 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 ha\'ing regard to the method of packing adopted
and the other 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
producls 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 manufocturing 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 ':\avaratna' 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 that
trade name "Navaratna Pharmceutical 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 havin_s 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".
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DURGA DUTT V. NAVARATNA LAB. (Ayyangar !.)
743
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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 iearned Judges confirmed all the findings
and the decree of the learned District Judge and made an order
B 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
C
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
D right in this, the addition of the words "Phannaceuticar' ai;d
"Laboratories" which were common English words of ordinary
use to designate the place where pharmaceutical p10ducts
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
E 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
F 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,
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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-
Sl'PREME COl:RT
REPORTS
[1965) I SCR
tion, a geographical name or surname or the
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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
'Jistinctive· means adapted, in relation to the goods io
cespect of which a trade mark is proposed to be registered. ,o 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 i.s rroposed to be registered subject to limitation.s.
itl 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 adaptetl to
distinguish, and
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I b) by reason of the use of the trade mark or of
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any other circumstances, the trade mark is in
fact so adapted to distinguish :
Provided that in ihe 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, duri~g a
period from a date prior to the 25th day of February,
193 7, 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..,. (I)
which excluded words "having direct reference to the character
or quality of the goods" from being treated as distinctive, and
thus qualifying for registrability.
The word 'Navaratna' ha"l'ing
been held to be not distinctive and indeed incapable of ~coming
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DURGA DUTT v. NAVARATNA LAB. (Ayyangar J.)
7~5
distinctive by reason of its being merely the Sanskrit word for
d~cribing 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 term•
of the proviso to sub-s. ( 3) to which we shall advert pre5entl y.
we see great force in the submission of the learned Counsel.
As Fry L. J. said in in re: Dunn(') with reference to the corresponding 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 ~truggle
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. That
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 stud! and
fastening devices, Lloyd-Jacob J. observed : (')
"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.( 3)-Yorkshire Copper
Works Ltd. v. Registrar of 'Trade Marks(') was an appeal from
(l) 6 R.P.C. 379 at 386.
(2) In the matter of American Screw Co.'s appln. (1959] R.P.C. 34-4 al 3~
(3) (1954) 71 R.P.C. ISO.
(4) (1952) 69 R.P.C. 207; (1953) 70 R.P.C. 1.
746
SUPREME COTJllT REPORTS
[I 965] 1 S.C.R.
the Coun of appeal affirming the decision of the Divisional Court
A
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 ncn-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
B
-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'
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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
I 00 per cent distinctiveness.
In spite of this fact the
Registrar refused registration and has been upheld in
his refusal by Lloyd-Jacob, I. 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 Appellants that distinctiveness in fact is conclusive--at any
rate, if there is what he called I 00 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 integra, 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
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DURGA DUTT v. NAVARATNA LAB. (Ayyangar !.)
747
goods of the Appellants.
I do not propose to try to
define t,his 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 distinguish 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
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
D are unnecessary for our present purpose.
The learned Counsel
is therefore right in his submission that if the right of the respondent 'o the registration of his mark had to be considered
solely on the terms of s. 6 (1), the appellant's submissions as
regards the non-registrability of the respondent's
mark would
have great force.
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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
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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)
G
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, thene
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.
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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
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[1965] I S.CR.
consumption.
Thus the finding was that by reputation the mark
had come to denote the goods of the respondent.
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 Diitrict 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 discussed 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 respt'ndent'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 (I ) 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. (I) it could not qualify
for registration on the basis of acquired distinctiveness by long
mer 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 l;td.(')
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(J) 49 c.w.N. 425.
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DURGA DUTT v. NAVARATNA LAB. (Ayyangar J.)
7 4&
Before proceeding further we
should add that there is a
decision of the Allahabad High Court in Ram Rekhpal v. Amrit
Dhara Pharmacy(') 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
acquired
dL>tinctiveness.
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. Venkateswaran's treatise which learned Counsel adopted
as part of his argument.
The 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 distinctiveness as entitling a mark for registration notwithstanding the fact
G 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·
H
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·
(I} A.I.R. 1957 All. 683.
750
SUPREME COURT REPORTS
[1965] I S.C.R.
recorded a finding that the ·mark submitted for registration was
A
"not adapted to distinguish as aforesaid", that is, that the mark
·did not fulfil 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 disB
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 acqui1ed 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 satisc
fied, 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
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was prohibited from being registered under s. 6 (I)( 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' hy 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 to accept this construction, nor do we read the opening words of sub-s. (2) as necessarily leading to this result.
Briefly stated, "distinctive" is defined in sub-s. ( 2) as "adapted
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to distinguish" and the latter phrase explained in language which
might exclude what is negatived by s. 6 ( l )( d).
But that, however, docs not solve the problem created by the words of the
proviso "Shall not refuse registration by teason onlv of the fact
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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.
DURGA DUTT v. NAVARATNA LAB. (Ayyangar !.)
7 51>
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( 3) and then on to sub-s. ( 2) and necessarily also to the provision ins. 6(l)(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
B 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
c 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 elsewherei. A construction which would lead
to old marks and new marks being placed on the sam..e footing
D and being subjected . to the same tests for registrability cannot,
in our opinion, be accepted.
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In this connection, some support was sought for the construction 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
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to s. 6(3), there could really be no cases whei:e the Registrar
could refuse registration,
with the result 'that the contingency
contemplated by s. 20 of the Act could never arise.
This was
7 52
SUPREME COURT REPORTS
(1965] I S.C.R.
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.