F. Hoffmann-La Roche & Co. Ltd vs Geoffrey Manners & Co. Pvt.

Coram: V Ramaswami J.

Forum: Supreme Court of India

Citation: 1970 AIR 2062, 1970 SCR (2) 213

Facts:-

In this case, a Limited liability company was owned by the appellant incorporated under the
laws of Switzerland. The business of the company is manufacturing and selling of chemical
and pharmaceutical products. The respondent in this is a company carried a business of
manufacturing and selling of pharmaceutical and chemical products in India. Registration of
Trademark for PROTOVIT” was granted on December 2, 1946. These marks were used by
the appellant as a mark on tablet form and multivitamin preparation and all over the goods
which are sold since the year 1951.

Meanwhile in 1957 Registration of Trademark of “DROPOVIT” was registered by defendant.

But in this process of registration notice of appellant was skipped but it is not about opposing
the registration and respondent mark was registered after the advertisement. There was failed
negotiation was done when appellant attention was drawn to the registration of the
respondent. There was a negotiation between the party which failed. On January 21, 1959 the
appellant applied for rectification of the Register by removal therefrom of the respondent's
trade mark on the ground that Respondents’ mark closely resembled the Appellant’s mark
and likely to cause deception.

The Appellant later amended their application and added that the mark of response is not
invented word. This application was rejected by the Joint Registrar and it was held that the
respondent’s mark is not deceptive or similar to the appellant's mark and considered the word
“DROPOVIT”  to be as not descriptive and rejected the application.

Court History: The Single Judge and Divisional Bench also decided in favour of Respondent.
The Appellant went to High Court for Appeal against the impugned order. Mr. Justice
Tarkunde dismissed the appeal. The appellant preferred an appeal under Letters Patent but the
appeal was dismissed by a Division Bench consisting of Chief Justice Chainani and Mody, J.
on August 17, 1964.

Main Issue:-
1. Whether “DROPOVIT” is deceptive and similar to the word “PROTOVIT” and offending
the provision of Section 12(1) of the Trade and Merchandise Act, 1958?

2. Whether “DROPOVIT” was a descriptive or invented word for Section 9(1) of the Act.

Response to the Issue:-

1) No, it was held by the Court that the High Court and the Joint Registrar of Trade Marks
were right in holding that there was no real tangible danger of confusion if respondent's
trademark was allowed to continue to remain on the Register and the application' for
rectification made by the appellant should be dismissed. (Paragraph 10)

2) Yes,    It was held that the word “DROPOVIT” is an invented word does not fall under
the ambit of the descriptive word and the Joint Registrar was correct in stressing there
was no threat to the trademark of the appellant.  (Paragraph 13)

Relevant Sections: -   Section 9(1) and 12 in The Trade And Merchandise Marks Act,
1958, Section 12 in The Trade Marks Act, 1999.

Law Established: -

“……the following was held :

although the application for rectification was made in the January 1959 before the act came
into operation yet by virtue of section 136 class III the case is governed by the act
(paragraph 5)

The phrase “DROPOVIT” is not deceptively similar to the word “PROVIT”within the
meaning of section 2 clause 1 clause 2 of the ACT. Nor it is likely to cause confusion as
outlined in the section. The true test of look and sound must be used (paragraph 6 and 7)

In order to decide whether the word "DIROPOVIT" is deceptively similar to the word
"PROTOVIT" each of the two words must, therefore, be taken as a whole word. Each of
the two words consists of eight letters, the last three letters are common, and in the
uncommon part the first two are consonants, the next is the same vowel '0', the next is a
consonant and the fifth is again a common vowel '0'. The combined effect is to produce
an alliteration. The affidavits of the .appellant indicate that the last three letters "VIT" is
a well known common abbreviation used in the pharmaceutical trade to denote Vitamin
preparations. (paragraph 8)
It is true that the word "DROPOVIT" is coined out of words commonly used by and known to
ordinary persons knowing English. But the resulting combination produces a new word, a
newly coined word which does not remind an ordinary person knowing English of the
original words out of which it is coined unless he is so told or unless at least he devotes some
thought to it. It follows that the word "DROPOVIT" being an invented word was entitled to
be registered as 'a trade mark and is not liable to be removed from the Register on which it
already exists. (paragraph 13)

Reasoning: -

The supreme court referred to the case of Parker Knoll International limited and went into
the meaning of the two words to deceive and to cause confusion, in that case it was held that
to deceive means making false representation to make a person believe what is otherwise not
true whereas confusion is caused as a consequence of disability or lack of knowledge to
extricate the truth stated to him. (Paragraph 7)

The court in then referred to the case Pionotist Co., Ltd.’s , wherein the lord Parker
articulated the to test for comparing two trademarks, the two marks must be judged by their
appearance and the sound. The nature of the goods and the target customer to which they
would be attributed must also be taken into account if confusion in the minds of the public is
the foreseeable result of allotting the trademark registration out to be denied. (paragraph 7)

Further the court referred to the case of Aristoc Ltd. Vs Rysta Ltd wherein it was held that
marks must be compared as a whole, not any particular portion is to be compared and the
conclusion is to be drawn. The true test is whether the mark in totality making any confusion
or mistake to the person who is accustomed to the trademark. Hence keeping in mind all of
tgese cases, it was held that the two words “Dropovit” and “ Provit” did not create any
confusion. Keeping in mind the nature of the good being a medicine, the same shall be
prescribed by a doctor. Unless the handwriting of the doctor is unreadable, the chance of
confusion is remote. In addition, there are as many as 57 trade marks in the Register of
Trade Marks with the suffix "VIT". Therefore, even an average customer would know
that in respect of Vitamin preparations the word "VIT" occurs in large number of
trademarks and because of this he would naturally be on his guard and' take special care
against making a mistake. (Paragraph 7, 9)

Conclusion:-
The appeal was dismissed. It was upheld by the court that in totality, it is to be checked
whether it is creating confusion or deceiving customers by creating confusion in the mind of
the customer.

Link:- https://indiankanoon.org/doc/1389940/