# SUPREME COURT REPORTS [1960(1)] CORN PRODUCTS REFINING CO v. SHANGRILA FOOD PRODUCTS LTD

- **Citation:** [1960] 1 S.C.R. 968
- **Court:** Supreme Court of India
- **Decided:** 1960
- **Case number:** ·Civil· Appeal No. 319 of 1955
- **Bench:** S. K. Das, J. L. Kapur, A. K. Sarkar
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/supreme-court-reports-1960-1-corn-products-refining-co-v-shangrila-food-1847
- **Pages:** 14

## Headnote

Trade Mark-Registration of-" Gluvita" and," Glucovita "-·
Similarity, if likely to deceive or confuse the public-Trade Marks
Act, I940 (V of z940), s. 8(a).
The respondent company had made an application nnder the
Trade Marks Act, for registration of the mark "Glnvita" in
respect of biscuits manufactured by it. The appellant company
which had earlier obtained a registration of its mark "Glucovita"
in respect of "Dextrose (d-Glucose powder mixed with vitamins)
a substance used as food or as an ingredient in food; glucose for
food" under the Act, opposed the respondent company's application for registration.
Held, that the registration of the respondent company's mark
should be refused under s. 8(a) of the Act as, it is so similar
to the mark of the appellant company as to be likely to deceive
or cause confusion and as the appellant company had proved
that its mark had acquired a reputation in the market.
The question whether t\\70 competing marks are so similar as
to be likely to deceive or cause confusion is one of first impression and it is for the court to decide it. The question has to be
approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall
structural and phonetic similarity of the two marks Gluvita and
Glucovita ts likely to deceive or to cause confusion. Apart from
the syllable" CO" in the appellant COil'pany's mafk, the two
marks are identical, and that syllable is not such as would enable
buyers in this country to distinguish between them.
English cases proceeding on the English way of pronouncing
English words may not be of much assistance in this country in
deciding questions of phonetic similarity.
In deciding whether two marks are so similar as to be likely
to deceive or cause confusion the similarity of idea is a relevant
consideration.
Harry Reynolds v. La.ffeaty's Ltd. 1958 R.P.C. 387, relied on.
When the goods are of different descriptions, a trade connection between them is a test available for deciding whether the
competing marks are likely to cause deception or confusion.
This test is applicable both where the marks are absolutely
..,.
indentical and where they closely resemble each other.
In the matter of application by Edward Hack, 59 R.P.C. 91 and
In the matter of an application by Ladislas Jellinek, 63 R.P.C. 59,
relied on.
..
•
.,
S.C.R.
SUPREl\IE COURT REPORTS
969
- In order that a trade mark may acquire a reputation among
buyers, it is not necossary that they should know who the
manufacturer of the goods is.'.
It is no answer to an opposition to- an application for registration to say that there is a number of· marks having one or
more common features which occur in the proposed mark unlessit is proved that these marks had by user acquired a reputation
in the market.
-
• In the matter of an application by Beck, Kollar and Company
(England) Limited, 64 R.P.C. 76 and In the matter of an application
by H arrods Ltd." 52 R.P.C. 65, relied on.
.
\he rei;istrntion of a mark does not prove its user of
reputation.
•
'
IVillesden Varnish Co. Ltd. v. Young and Marten Ltd., 39
R.P.C. 285, relied on.
-
CIVIL
APPELLATE
JURISDICTION: ·Civil· Appeal
No. 319 of 1955.
Appeal from th'e judgment and order dated Decem;
her 3, 1953, of the Bombay High Court, in Appeal
No. 86 of l!J53, arising out of the judgment and order
dated October 14, 1953, of the said Court, in l\Iisc. Petition No. 270 of 1953.
·
K. S. Shavaksha, S. N. Andley, J. B. Dadachanji,
and Rameshwar Nath, for the appellants.
' Purshottam -Tricumdas, B. K. B. Naidu and I. N.o
Shroff, for the respondents.
1959. -October 8. The Judgment of the Court was
delivered by
SARKAR J.-This appeal arises out of an application
made under the· Trade Marks Act, 1940, hereinafter
called the Act, for registration of a trade mark. The
application was made by the respondent and it was
opposed by the appellant.
-
-
The respondent" is a manufacturer of biscuits. · On
November 5, 1949, it made the application for

## Text

I959
October8,
968
SUPREME COURT REPORTS [1960(1)]
CORN PRODUCTS REFINING CO.
v.
SHANGRILA FOOD PRODUCTS LTD.
(S. K. DAS, J. L. KAPUR and A. K. SARKAR, JJ.)
Trade Mark-Registration of-" Gluvita" and," Glucovita "-·
Similarity, if likely to deceive or confuse the public-Trade Marks
Act, I940 (V of z940), s. 8(a).
The respondent company had made an application nnder the
Trade Marks Act, for registration of the mark "Glnvita" in
respect of biscuits manufactured by it. The appellant company
which had earlier obtained a registration of its mark "Glucovita"
in respect of "Dextrose (d-Glucose powder mixed with vitamins)
a substance used as food or as an ingredient in food; glucose for
food" under the Act, opposed the respondent company's application for registration.
Held, that the registration of the respondent company's mark
should be refused under s. 8(a) of the Act as, it is so similar
to the mark of the appellant company as to be likely to deceive
or cause confusion and as the appellant company had proved
that its mark had acquired a reputation in the market.
The question whether t\\70 competing marks are so similar as
to be likely to deceive or cause confusion is one of first impression and it is for the court to decide it. The question has to be
approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall
structural and phonetic similarity of the two marks Gluvita and
Glucovita ts likely to deceive or to cause confusion. Apart from
the syllable" CO" in the appellant COil'pany's mafk, the two
marks are identical, and that syllable is not such as would enable
buyers in this country to distinguish between them.
English cases proceeding on the English way of pronouncing
English words may not be of much assistance in this country in
deciding questions of phonetic similarity.
In deciding whether two marks are so similar as to be likely
to deceive or cause confusion the similarity of idea is a relevant
consideration.
Harry Reynolds v. La.ffeaty's Ltd. 1958 R.P.C. 387, relied on.
When the goods are of different descriptions, a trade connection between them is a test available for deciding whether the
competing marks are likely to cause deception or confusion.
This test is applicable both where the marks are absolutely
..,.
indentical and where they closely resemble each other.
In the matter of application by Edward Hack, 59 R.P.C. 91 and
In the matter of an application by Ladislas Jellinek, 63 R.P.C. 59,
relied on.
..
•
.,
S.C.R.
SUPREl\IE COURT REPORTS
969
- In order that a trade mark may acquire a reputation among
buyers, it is not necossary that they should know who the
manufacturer of the goods is.'.
It is no answer to an opposition to- an application for registration to say that there is a number of· marks having one or
more common features which occur in the proposed mark unlessit is proved that these marks had by user acquired a reputation
in the market.
-
• In the matter of an application by Beck, Kollar and Company
(England) Limited, 64 R.P.C. 76 and In the matter of an application
by H arrods Ltd." 52 R.P.C. 65, relied on.
.
\he rei;istrntion of a mark does not prove its user of
reputation.
•
'
IVillesden Varnish Co. Ltd. v. Young and Marten Ltd., 39
R.P.C. 285, relied on.
-
CIVIL
APPELLATE
JURISDICTION: ·Civil· Appeal
No. 319 of 1955.
Appeal from th'e judgment and order dated Decem;
her 3, 1953, of the Bombay High Court, in Appeal
No. 86 of l!J53, arising out of the judgment and order
dated October 14, 1953, of the said Court, in l\Iisc. Petition No. 270 of 1953.
·
K. S. Shavaksha, S. N. Andley, J. B. Dadachanji,
and Rameshwar Nath, for the appellants.
' Purshottam -Tricumdas, B. K. B. Naidu and I. N.o
Shroff, for the respondents.
1959. -October 8. The Judgment of the Court was
delivered by
SARKAR J.-This appeal arises out of an application
made under the· Trade Marks Act, 1940, hereinafter
called the Act, for registration of a trade mark. The
application was made by the respondent and it was
opposed by the appellant.
-
-
The respondent" is a manufacturer of biscuits. · On
November 5, 1949, it made the application for registration of the mark • Gluvita ' in respect of the goods
specified in class 30, which mark, it appeared later,
it !iad not used prior to that date. The Registrar
ordered the application to be advertised before acceptance on the respondent's agreeing to limit the registration to biscuits only which were one of the classes
: of goods specified in class 30.
•
• •
•
•
'959
Corn Products
Refining .cq.
v.
•
Shangrila Food
Products Ltd
Sarkar fa
•
I959
Com Products
Refining Co.
v.
Shangrila Food
Products Ltd.
Sarkar j.
970
SUPREME COURT REPORTS [1960(1)]
The appellant is a corporation organised under the
faws of the State of New Jersey in the United States.
On August 31, 1942, it had registered the mark
' Gluoovita ' under the Act in class 30 in respect of
"Dextrose (d-Gluoose powder mixed with vitamins), a
substance used as food or as an ingredient in food ;
glucose for food." On the same date the appellant
had also registered the same trade mark in class 5 in
respect of "Infan~' and invalids' foods."
The appellant opposed the respondent's application
contending that it should be refused under ss. S(a) and
and 10(1) of the Act to which oppositfon the respondent duly filed a counter statement. Both sides filed
affidavits in support of their respective oases.
The Deputy Registrar held that s. 10(1) did not
a. pply, for biscuits included in class 30 were not goods
of the same description as glucose powder mixed with
vitamins which was in the same class. He further
held that the words ' Gluoovita ' and ' Gluvita ' were
not visually or phonetically similar and that there was
no reasonable likelihood of any deception being caused
by or any confusion a.rising from, the use of the respondent's proposed mark. In regard to s. S(a.), he held
applying the case of In re: an application by Smith
Hayden &: Coy. Ld. (') that the syllable 'co' which
was absent in the respondent's proposed mark sufficiently distinguished the two marks and made it
impossible for any one to be -deceived or confused.
One of the findings made by the Deputy Registrar was
that the appellant had acquired a reputation and goodwill for its trade mark ' Glucovita. ' in respect of
glucose powder mixed with vitamins.
The appellant then preferred a.n appeal to the High
Court a.t Bombay from the order of the Deputy
Registrar. That appeal was heard by Desai, J., exercising the original jurisdiction of that Court. It was not
seriously pressed before him on behalf of the appellant
that the goods were of the same description and he
himself also came to the conclusion that·.they were not
so.
He, therefore, held that the registration could
not be refused under s. 10(1) of the Act. Desai, J.,
(1) (1945) 63 R.P.C. 97•
•
•
S.C.R.
SUPREME COURT REPORTS
971
a.greed with the Deputy Registrar's finding that the
appellant had acquired a reputation among the public
for the mark 'Glucovita' in respect of glucose p.owder
mixed with vitamins. He however disagreed with the
view of the Deputy Registrar that the respondent's
mark was not likely to cause deception or confusion.
He held that the two marks were sufficiently similar
so a.s to be reasonably likely to cause deception and
confusion. He, therefore, set aside the order of the
Deputy Registrar and held that the respondent's mark
could not be registered in view of s. 8(a).
Now the respondent appealed from the judgment of
Desai, J. ll'his appeal was heard by Chagla, C.J., and
Shah, J., ef the same High Court. The learned Judges
of the appellate bench took the view that there was
no evidence that the appellant's mark had acquired
any reputation among the public but that the evidence
produced showed that it had acquired a reputation
among the tradespeople only who were discerning and
were not likely to be deceived or confused. According
to them, the public not being aware of the reputation
of the appellant's trademark were not likely to be
deceived or confused by the use by the respondent of
its proposed trademark. . They also held that the
evidence established that there were a series of marks
in which the "prefix or suffix 'Gluco' or 'Vita'
occurred and that it could not therefore be said that
the common features 'Gluco' anp· 'Vita' were only
associated with the manufacture of the appellant's
goods. On bJth these grounds they held that the
proposed ma.rk of the respondent was not likely to
confuse or deceive any one. In the result, they set
a.side the order of Desai, J., and restored that of the
Deputy Registrar. The appellant has now appealed
to this Court from the judgment of the appellate
Judges of the High Court.
As we have earlier stated, the appellant had opposed
the registration of the respondent's ma.rk under s. S(a)
and also under s. 10(1). In order that s. 10(1) might
apply to the case, the appellant had to establish that
its mark had been registered in respect of the ·same
goods or description of goods for which the respondent
r959
Corn Products
Refining Co.
v.
Shangrila Food
Products Ltd.
Sarkar].
1959
Corn Producls
Refining Co.
v.
Slzangrila Food
Products Ltd.
Sarkar].
972
SUPREME COURT REPORTS [1960(1)]
had made its application for registration. On this
question the decisions of the Deputy Registrar and
Desai, J., are against the appellant. Before the appellate
Judges of the High Court the appellant proceeded on
the basis that the goods were not of the same description. Before us also the appellant has adopted the same
attitude. That puts s. 10(1) out of the way. We are
thus left only with the question whether s. 8 (a)
prevents the registration of the respondent's mark.
In our judgment the view of the appellate Judges of
the High Court that there was no evidence that the
appellant's trade mark had acquired a reputation
among the public cannot be sustained. In.coming to
this view, they relied on the affidavits filed by the
appellant wherein it was stated that "Glucovita is a.
well-known mark in the trade" and denoted only the
products of the appellant. We think that the learned
appellate Judges put too strict a meaning on the words
"in the trade " in thinking that they referred only to
the tradespeople. In our view, these words,may refer
also to the public. If they do, then, of course, that
would be evidence that the appellant's mark had
acquired a reputation among the public.
But apart from this, there is other evidence on the
record to support the conclusion that the appellant's
mark had acquired a reputation among the public.
The appellant had in its opposition categorically stated
that its mark had acquired a reputation among the
Indian buying public. There is no clear denial of'this
in the counter-statement filed by the respondent. There
is further ample evidence to show that the appellant's
goods under its mark 'Glucovita ' were sold in very
large quantities in small containers of one pound and
four ounces capacities. The small sizes of the containers would indicate that the goods were sold to the
public for if those sales had been to tradespeople for
industrial purposes, they would have been made in
bulk or in much larger containers. It appears that
the appellant spent considerable sums for the advertisemerit of its .mark ' Glucovita ' in ordinary popular
journals and this would indicate that it had a large
$ale for its goods among the general public. But the
•
S.C.R.
SUPREME COURT REPORTS
973
most conclusive evidence of the sale of the appellant's
goods under the mark 'Glucovita' to the general public
comes from the affidavits filed by the respondent itself.
From the affidavit of K. M. Jamal, a P.artner in a firm
of Pa.war and Co., filed by the respondent, it appears
that" a number of customers come-to buy the products
'Gluvita' and the products 'Glucovita '."
~imilar
statements appear in eight other such affidavits. The
evidence provided by these affi<la vita make it perfectly
clear that the appellant's mark had acquired a reputation among the general buying public. We think it
right in this connection also to refer to the respondent's
grounds of appeal against the judgment of Desai, J.
In these the respondent does not dispute, and in fact
it assumes, that the appellant's mark had acquired a
reputation among the public. We are, therefore, fully
satisfied that the appellant has established that its
mark has acquired a reputation among the buying
public.
In connection with the question of reputation, the
learned appellate Judges seem to have fallen into
another curious error. They saicl "A commodity may
acquire reputation by its being ma.de by a particular
manufacturer and the consumers may require not a
particular commodity but the commodity ma.de by a
· particular manufacturer. It is only in the latter case
that it could be said that the com:r;riodity manufactured by. a particular manufacturer has acquired a
reputation among the public. On those affidavits
there is not even a suggestion that the public wanted
the 'Glucovita' powder mixed with vitamins manufactured by the respondent and not by anybody else."
The respondent referred to by the learned JuJges is
the appellant ;before us.
We are unable to agree with
the view expressed by them. It Reems clear to us that
what is necessary is that the reputation should attach
to the trade mark; it should appear that the public
associated that trade mark with certain goods. The
reputation with which we are concerned in the present
case is the reputation of the trade mark and not that of
the maker of the goods bearing that trade mark. A
trade mark may acquire a reputation in connection
u3
1959
Corn Prodw;ls
Refining Co.
v.
Shangrila Food
Prodiws Ltd.
Sarkar].
1959
Corn Products
Rtfining Co,
v.
Shangrila Food
Products Ltd.
Sarkar f,
974
SUPREME OOUHT REPORTS [1960(1)]
with the goods in respect of which it is used though
a buyer may not know who the manufacturer of the
goods is.
In our view, therefore, it would be wrong in this
case to say that the appellant's trade mark had not
acquired any reputation among the general public and
that hence there is no reasonable apprehension of their
being confused or deceived by the use of the respondent's proposed mark.
The second point on which the learned appellate
Judges based themselves in arriving at the conclusion
that there was no reasonable apprehension of confusion or deception was, as we have earlier stated, that
there were various trade marks with a prefix or suffix
'Gluco' or 'Vita' and that made it impossible to say
that the common features ' Glu ' and 'Vita' were only
associated with the appellant's products. This view
was founded on a passage which the learned appellate
Judges quoted from Kerly on Trademarks, 7th Edn.
p. 624. That passage may be summarised thus : Where
there are a " series" of marks, registered or unregistered, having a common feature or a common syllable, if
the marks in the series are owned by different persons,
this tends to assist the applicant for a mark containing
the common feature. This statement of the law in
Kerly's book is based on In re: an application by Beck,
Kollar and, Company (England) Limited('). It is clear
however from that case, as we shall presently show,
that before the applicant can seek to derive assistance
for the success of his application from the presence of
a number of marks having one or more common
features which occur in his mark also, he has to prove
that those marks had acquired a reputation by user in
the market. We will now read a portion of the judgment at pp. 82 & 83 in Beck, Kollar &: Go's case(') from
which what we have stated earlier, appears:
" I am disposed to agree with Mr. Burrell's submission that the "series" objections is primarily
founded upon user, because the inference which the
Registrar is asked to draw is that traders and the
public have gained such a knowledge of the common
(1) 64 RP.C. 76.
S.C.R.
SUPREME COURT REPORTS
975
element or characteristic of the " series" that when
they meet another mark having the same characteristic they will immediately associate the later mark
with the "series" of marks with which they are
already familiar. But I do not think that this
statement necessarily implies that the whole issue
must be determined solely under the provisions of
sec. 11, as I will now endeavour to explain.
"When an application for re~istration is before the
Registrar it frequently happens that the search for
conflicting marks reveals several marks having some
characteristic feature in common with t.he mark of
the application, which mark!\ may stand on the
Register in the name of one proprietor only, or in
the name of several different proprietors. At this
stage, when the matter is one between the applicant
and the Registrar, the latter generally has before
him no evidence as to whether the registered marks
are in actual use or not, but in forming an opinion
under Sec. 12 as to whether or not confusion or
deception is likely to arise, he is bound, I think, in
the absence of evidence to presume that, primafacie
some at least of the registrations have been effected
bona fide by persons who at the date of their respective applications were using or proposed in the near
future to use their marks. If, therefore, all the
marks were owned by one proprietor, the Registrar
would presume that the latter was using a "series"
of marks and judge the conflict between the applicants' mark and each 6f the proprietor's marks with
this consideration in mind. Of course, if the registrations merely consisted of one and the same word
registered separately in respect of several articles to
be found in a single class of the Trade Marks Schedules, the Ragistrar would in general regard all
these registrations as but the equivalent of a single
registration covering all the items, for they would
not constitute a ·" series " as now under discussion.
On the other hand, if the registered marks found
were owned by several different proprietors, this
would be a circumstance which might considerably
assist the applicant, who would be in a. position to
r959
Carn Produets
Refining Co.
v.
Shangrila Food
Products Lid.
Sarkar].
I959
Corn Products
Refining Co.
v.
Shangrila Food
Products Ltd.
Sarkar].
976
SUPREME COURT REPORTS [1960(1)J
submit that the common characteristic was one well
re_cognised in marks in use in the particular trade.
In short, when the ~egistrar comes to compare the
applicant's mark with the registered marks, using
the principles laid down in the " Pionotist " case
the presence of marks on the Register other than the
one with which the comparison is is being made is
regarded an one of the surrounding circumstances
which he is required f,o take into account.
"But when the same question comes before the
Registrar in opposition proceedings, it appears to
me that he is no longer in a position to make any
presump,tion as rllgards the surrounding circumstances, but that before he can draw the suggested
inference based upon the user of other marks either
in the applicant's or the opponent's favour, any
such user must be established by evidence (see, e.g.
Harrods Ld.'s Application, 52 R.P.C., p. 70, 1. 39-p.
71, 1. 15, where the Registrar refused to draw the
necessary inference in favour of the applicants in
the proceedings)."
We have no reason to think that Kerly in stating the
law on the subject intended to depart from the principle stated in the' passage that we have just now read,
from Beck, Kollar & Co's casl).
We may also refer to In re: Harrods' appliwtion (')
mentioned in the quotation from Beck, Kollar & Go's
case (') set out in the preceding paragraph. It was there
said at p. 70,
Now it is a well recognise"d. principle, that has to
be taken into account in considering the possibility
of confusion arising between any two trademarks,
that, where those two marks contain a common element which is also contained in a number of Qther
marks in nse in the same market such a common
occurrence in the market tends to cause purchasers
to pay more attention to the other features of the
respective marks and to distinguish between them by
those features. This principle clearly· req,uires that
the marks comprising the common element shall be
(1) 52 R.P.C. 65.
(2) 64 R.P.C. 76.
..
S.C.R.
SUPREME COURT REPOB.TS
977
in fairly extensive use and, as I have mentioned, in
use in the market in which the marks under consideration are being or will be used.
The series of marks containing the common element
or elements therefore only assist the applicant when
those marks are in extensive use in the market.
The onus of proving such user is
of course on
the applicant, who wants to rely on those marks.
Now in the present case the n.pplicant, the respondent
before us, led no evidence as to the user of marks with
the common element.
What had happened was that
the Deputy Registrar looked into his register and found
there a large number of marks which had either
' Gluco ' or 'Vita ' as prefix or suffix in it. Now of
course the presence of a mark in the register does not
prove its user at all. It is possible that the mark may
have been registered but not used. It is not permissible to draw any inference as to their user from the
presence of the marks on the register. If any authority on this question is considered necessary, reference
may lie made to Kerly p. 507 and WWesden Varnish
Go. Ltd. v. Young & Marten Ltd. (1). It also appears
that the appellant itself stated in one of the affidavits
used on its behalf that there were biscuits in the
market bearing the marks 'Glucose Biscuits ', ' Gluco
biscuits' and 'Glucoa Lactine biscuits '. But these
marks do not help the respondent in the present case.
They are ordinary dictionary words in which no one
has any right. They are really not marks with a
common element or elements. We, therefore, think
that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on
the series marks, having' Gluco' or 'Vita' as a prefix
or a suffix.
We have already said that in our view the mark
'Glucovita' has acquired a reputation among the
general buying public.
The first question that then
arises is whether the marks ' Glucovita' and 'Gluvita '
are so similar as to be likely to cause confusion to the'
buying public or deceive them. On this matter, we
have not the advantage of the view of the learned
(I) 39 R.P.C. 285 p. 289.
I959
Corn Products
Hefimng Co.
v.
Shangrila Food
Products Ltd.
Sarkar J.
I959
Corn Products
Refining Co.
v.
Shangrila Food
Products Ltd.
Stukar ].
978
SUPREME COURT REPORTS [1960(1)]
appellate Judges of the High Court. They did not
express any view on this aspect of the question at all.
We are however inclined to think that their answer to
the question would have been in the affirmative.
However that may be, the Deputy Registrar felt that
the words were not so similar as to be likely to gi ·rn
rise to confusion or to cause deception. He felt that the
syllable 'co' in the appellant's mark was an emphatic characteristic and was not likely to be slurred
over. He apparently felt that this syllable would prevent
any confusion arising between the two marks or any
person being deceived by the use of them both. He
thought that the test laid down in what is called the
"Ovax" case (In re: an application by Smith Hayden
and Go. Ltd. (1)
should be appl.ied and that the
emphatic characteristic of the second syllable in the
mark 'Glucovita' should decide that there was no
likelihood of confusion arising. Desai, J., thought that
the Deputy f!,egistrar was wrong.
We think that the view taken by Desai, J., is right.
It is well known that the question whether the two
marks are likely to give rise to confusion or not is a
question of first impression.
It is for the court to
decide that question. English cases proceeding on the
English way of pronouncing an English word by
Englishmen, which it may be stated is not always the
same, may not be of much assistance in our country in
deciding questions of phonetic similarity. It cannot be
overlooked that the word is an English word which to
the mass of the Indian people is a foreign word. It is
well recognised that in deciding a question of similarity between two marks, the marks have to be
considered as a whole.
So considered, we are inclined
to agree with Desai, J., that the marks with which this
case is concerned are similar. Apart from the syllable
'co' in the appellant's mark, the two marks are identical. That syllable is not in our opinion such as would
enable the buyers in our country to distinguish the
.one mark from the other.
We also agree with Deasi, J., that the idea of the
two marks is the same. The marks convey the ideas
(1) 63 R.P.C. 97.
y
S.C.R.
SUPREME COURT REPORTS
979
of glucose and life giving properties of vitamins.
The Aquamatic case (Harry Reynolds v. Laffeaty's Ld.) (1)
is a recent case where the test of the commonness of
the idea between two marks was applied in deciding
the question of similarity between them. Again, in
deciding the question of similarity between the two
marks we have to approach it from the point of view
of a man of average intelligence and of imperfect
recollection. To such a man the overall structural
and phonetic similarity and the similarity of the idea
in the two marks is reasonably likely to cause a
confusion between them.
It was then said that the goods were not of the
same description and that therefore in spite of the
similarity of the two marks there would be no risk of
confusion or deception. We are unable to accept
this contention. It is true that we have to proceed
on the basis that the goods are not of the same description for the purposes of s. 10 (1) of the Act. But
there iE1 evidence that glucose is used in the manufacture of biscuits. That would establish a trade
connection between the two commodities, namely,
glucose manufactured by the appellant and the biscuits produced by the respondent. An average purchaser would therefore be likely to think that the
respondent's ' Gluvita biscuits ' were made with the
appe!lant's 'Glucovita ' glucose. This was the kind
of trade connection between different goods which in
the "Black Magic" case (In re: an application by
Edward Hack (2)) was taken into consideration in arriving at the conclusion that there was likelihood of
confusion or deception. The goods in this case were
chocolates and laxatives and it was proved that
J.a.xatives were often made with chocolate coatings.
We may also refer to the "Panda" case (In re: an
application by Ladislas Jellinek (3)).
The goods there
concerned were shoes and shoe polishes. It was
observed that sh9e polishes being used for shoes, there
was trade connection between them and that this
might lead to confusion or deception though the goods
were different. The application for registration was
(t) 1958 R.P.C. 387.
(2) 58 R.P.C. 91.
(3) 63 R.P.C. 59
r959
Corn Products
Refining Co.
v.
Shangrila Food
Prcducts Ltd.
Sarkar].
1959
Corn Products
Rafining Co.
v.
Shangrila Food
Products Ltd.
Sarkar J.
980
SUPREME COURT REPORTS [1960(1)]
however refused under that section of the English Act
which corresponds to s. 8 of our Act on the ground
that the opponents, the manufacturers of shoes, had
not established a reputation for their trademark
among the public.
It is true that in both the above-mentioned cases
the two competing trade marks were absolutely identical which is not the c?se here. But that in our
opinion makes no difference.
The absolute indentity
of the two competing marks or their close resemblance
is only one of the tests for determing the question of
likelihood of deception or confusion. Trade connection
between different goods is another such test. Ex hypothesi, this latter test applies only when the goods are
different. These tests are independent tests. There
is no reason why the test of trade connection between
different goods should not apply where the competing
marks closely resemble each other just as much as it
applies, as held in the "Black Magic" and "Panda"
cases, where the competing marks were identical.
Whether by applying these tests in a particular case
the conclusion that there is likdihood of deception or
confusion should be arrived at would depend on all the
facts of the case.
It is then said that biscuit.s containing glucose are
manufactured with liquid glucose whereas the appellant's mark only concerns powder glucose.
We will
assume that only liquid glucose is used in the manufacture of biscuits with glucose.
But there is nothing
to show that an average buyer knows with what kind
of alucose, biscuits containing glucose are or can be
made. That there is trade connection between glucose
and biscuits and a likelihood of confusion or deception arising therefrom would appear from the fact
stated by th" n,ppellant that it received from a tradesman n,n enquiry for biscuits manufactured by it under
its mark 'Glucovita '. The trndesman making the
enquiry apparently thought that the manufacturer
of 'Glucovita ' glucose was likely to manufacture
biscuits with glucose; he did not worry whether
biscuits were made with powder or liquid glucose.
Then again it is stated in one of the affidavits filed by
,
S.C.R.
SUPREME COURT REPORTS
981
the appellant that the respondent's director told the
appellant's manager that the respondent had adopted
the name 'Gluvita' to indicate that in the manufacture of its biscuits glucose was used.
Those statements on behalf of th.e appellant are not denied by
the respondent. So, a trade connection between glucose and biscuits would appear to be established.
We are therefore of opinion that the commodities
concerned in the present case are so connected as to
make confusion or deception likely in view of the
similarity of the two trade marks. 'Ve think that_
the decision of Desai, J., was right.
In the result, we set aside the order of the learned
appellate Judges of the High Court and restore that
of Desai, J. The appeal is accordingly allowed. The
appellant will get the costs before the appellate
Judges in the High Court and in this Court.
Appeal allowed.
M. NAR.ASIMHACHAR
v.
THE S'rATE OF MYSORE
(B. P. SINHA, C.J., JAFER IMAM, J. L. KAPUR,
K. N. W ANCHOO and K. C. DAS GUPTA, ,TJ.)
State Seri•ice-Servant found guilty of various irregularities on
enquiry-Retirement on superannuation-Reduction of pensionRecavery of loss-Legality-Requirement of notice-Mysore Service
Regulations, arts. 294, 297, 2I6, 302, Rule 2(ii), Appendix AConstitution of India, Art. 3n(2).
The appellant was the Manager of a Mysore Government
Reserve Foodgrains Depot and was later on appointed Special
Revenue Inspector under the Assistant Director of Food Supplies.
He was, however, not allowed to join his new post and an order
•
of suspension was passed against him. Seven charges in respect
of various irregularities committed by him were framed against
him relating to the period when he held the former post. An
enquiry was held and six of them were found proved. A final
notice was served on him to show cause why he should not be
compulsorily retired and he did so.
In the meantime he reached
the age of superannuation and the Government passed the following order against him,-
124
1959
Corn Products
Re;fining Co.
v.
Shangrila .Food
Products Ltd.
Sarkar].
I959
October zz.