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Judgment
Z.S. Negi, J
This appeal under Sub-section (2) of Section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) is directed
against the order dated 23.11.1989 passed by the Deputy Registrar of Trade Marks dismissing the opposition and accepting the application for
registration subject to amending the specification of goods. After having the appeal transferred by the High Court of Judicature at Bombay to the
Intellectual Property Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999, the same was renumbered as TA/51/2003/TM/MUM by
the Appellate Board.
The appellant is a registered partnership firm carrying on the established business as the manufacturers and dealers of Ayurvedic medicinal
preparations and substances. The appellant in or about 1955 invented and adopted the trade mark 'RUMALAYA' for use upon and in respect of
ayurvedic medicinal preparations for treatment of rheumatic disorders; obtained registration of the said trade mark under No. 169131 as of 20.5.1955
in class-5 and the said trade mark has been in use continuously and uninterruptedly. The appellants have earned enviable reputation in the field of
ayurvedic medicinal preparations and is being exclusively associated with their medicinal preparations. In or about December, 1976, the appellant
came to know of the use of the trade mark 'RUMALAR' by the respondent No. 1 and, when after desist notice the respondent No. 1 refused to
comply with the notice, the appellant filed a suit No. 1103 of 1978 before the High Court of Bombay for injunction and damages against the
respondent No. 1 and the said suit is pending.
On 15.11.1978, the respondent No. 1 filed an application No. 342572 seeking registration of trade mark 'RUMALAR' in respect of pharmaceutical
preparations for human use in class-5 on the basis of user since 10.2.1965 and the application was advertised before acceptance in the Trade Marks
Journal No. 753 dated 16.10.1980 at page 653. The appellant filed opposition No. BOM-4591, opposing the application for registration on the following
grounds that:
(a) they are the established manufacturers and traders of ayurvedic medicinal preparations and have earned enviable reputation in that field; they
enjoy exclusive right to use the mark upon medicinal preparations and due to continuous and uninterrupted use of the mark upon or in respect of their
goods and spending sizeable amount on advertisement and publicity they are exclusively associated with the medicinal preparations and their goods
command large and ready sales throughout India;
(b) in or about the year 1955, they invented and adopted the trade mark 'RUMALAYA' for use upon or in respect of their medicinal preparations and
obtained registration under No. 169131 as of 20.5.1955 in class-5, which is valid and subsisting;
(c) the registration of trade mark RUMALAR is prohibited under Section 12(1) of the Act as the trade mark in respect of goods for which registration
of trade mark is sought for by the respondent No. 1 is deceptively similar to the trade mark of the appellant which is already registered in respect of
same goods or description of goods;
(d) the use of the mark is bound to cause confusion and deception amongst the members of the public and the trade and as such its registration is
prohibited under Section 11(a) of the Act;
(e) the adoption of the trade mark by the respondent No. 1 is dishonest and he is not and cannot be true and lawful proprietor of the said trade mark;
(f) it is against public interest as the use of the trade mark applied for by the respondent No. 1 will cause harm to the public.
The respondent No. 1 filed counter-statement claiming that it coined different trade marks having either as suffix or prefix 'ALAR' as part of the
trade mark as the word 'ALAR' has been registered under No. 271399 as of 19.4.1977 in class 5 in respect of pharmaceutical preparations for human
use and also denying the grounds of objections contained in the notice of opposition. After completion of the evidence of the parties, the opposition
was set down for hearing but in the meanwhile, the respondent No. 1 filed an interlocutory petition dated 30.12.1982 for taking his affidavit filed in suit
No. 1103/78 on record as the evidence. The interlocutory petition and the main case were heard together on 8.8.1989 by the respondent No. 3 when
the counsel for the appellant appeared but no one appeared for the respondent No. 1. The respondent No. 3 allowed the interlocutory petition and took
the affidavit of respondent No. 1 on record.
Thereafter, the respondent No. 3 on 23.11.1989 passed an order dismissing the opposition and allowing the application to proceed to registration
subject to amending the specification of goods. The respondent No. 3 dismissed the opposition on the following grounds:
(a) that when the rival marks are compared as a whole, there is no phonetic similarity and as regards similarity of goods, the goods of the rival marks
are same but in view of the phonetic dissimilarity he is of the opinion that the appellant have not completely established their ground under Section
12(1) of the Act;
(b) that since the respondent No. 3 has already held that the rival marks are not deceptively similar, he, therefore, opined that the appellant have not
established their ground under Section 11(a) of the Act;
(c) that in view of the explanation submitted by the respondent No. 1 about coining of the mark, the respondent No. 3 has no reason to doubt the
explanation; and
(d) that it is not necessary to deal with the issue under Section 12(3) of the Act in view of the fact that the respondent No. 3 has already rejected the
appellant's objections under Sections 11(a), 12(1) and 18(1) of the Act.
Aggrieved by the order of the respondent No. 3, the appellant have preferred the present appeal.
The respondent No. 1 has neither filed his counter to the appeal nor evidence before the High Court of Bombay. The appeal was listed for hearing
on 22.11.2004 before the Circuit Bench at Mumbai but the notice of hearing addressed to the respondent No. 1 was received back undelivered with
the postal remarks ""Left"" and the matter had to be adjourned as no representative on behalf of the respondent No. 1 appeared on that day. Hearing
notice for 26.6.2006 sent to all the parties were served except on the respondent No. 1 which was returned with the postal remarks ""Left"" and again
the hearing on 26.6.2006 was adjourned with the direction to the counsel for the appellant to publish the next hearing notice in newspapers. The next
date of hearing was fixed for 9.1.2007 and notices therefore were sent to the parties but the hearing notice addressed to respondent No. 1 had been
received back with the postal remarks 'Party Left'. The leaned counsel for the appellant submitted that the hearing notice has been published in the
newspaper on 4.1.2007. Since no one appeared for the respondent No. 1, the counsel for the appellant was directed to publish the hearing notice
giving the respondent No. 1 a clear 15 days' time before the next date of hearing. The hearing notices for 17.9.2007 were sent to the parties but the
notice addressed to the respondent No. 1 was returned with the postal remarks ""Name different"". The hearing notice in English and vernacular were
published in the Financial Express, Sunday edition of August 25, 2007 and Financial Express (Gujarati) Ahmedabad, dated 25.8.2007. The service of
notice on the respondent No. 1 by way of publication is sufficient and since the respondent No. 1 chose not to appear before the Bench, we have
decided to hear the appeal which is pending since 1990 and to dispose of the same on merit on the basis of available documents on record.
Learned Counsel for the appellant contended that the respondent No. 3 has erred in concluding that when the rival marks are compared as a whole
there is no phonetic similarity in view of the fact that the respondent's mark RUMALAR is a shorted word ending with the distinct sound 'LAR'
whereas the appellants mark is a word ending with the distinct sound 'LAYA'. Such a conclusion has been arrived at by the respondent No. 3 without
dealing with the cases, cited by the counsel for the appellant in support of his argument, on the ground that facts pertaining to the cited cases are
different from the case at hand and each case has to be decided on the basis of its own facts and also by totally ignoring the submission made by the
counsel for the appellant at the time of hearing that the last letter in the mark of respondent No. 1 slurs over while pronouncing and in view of this
there are chances of confusion and deception between the rival marks. In view of the finding of the respondent No. 3 that the goods of both the
parties were same, he ought to have accepted the appellant's objection under Section 12(1) of the Act. He stressed that the mark of the respondent
No. 1 is closely and deceptively similar, visually, phonetically and structurally with the registered trade mark of the appellant. Learned Counsel
contended that the adoption of the trade mark by the respondent No. 1 is dishonest and such adoption has been with the malafide intention to trade
upon the goodwill vested in the appellant's trade mark. The explanation regarding adoption of the mark given by the respondent No. 1 is imaginary and
after thought. The appellant's 'RUMALAYA' medicinal preparation has been sold in Gujarat since prior to 1964 and it is not the case of the
respondent No. 1 that he was not aware of the use of such mark by the appellant. He further contended that the respondent No. 3 has erred in
allowing the interlocutory petition of the respondent No. 1 as the same was not only filed beyond time but principally because the notice of motion and
order were not relevant and the object of the respondent No. 1 was to establish that the suit and the opposition were interlinked and to influence the
result of the pending suit in the event of his succeeding in the opposition. The learned Counsel lastly contended that the order of the respondent No. 3
is contrary to facts and law and the weight of evidence and as such is liable to be set aside.
We have carefully heard the learned Counsel for the appellant. As already stated above, no counter-statement and evidence of the respondent No.
1 were available on the record, the file pertaining to opposition proceeding was called for from the Registry of Trade Marks, Mumbai. On receipt of
the file pertaining to opposition from the Trade Marks Registry, Mumbai on 15.10.2007, we have gone through the records carefully. The issues
before us to decide are whether the respondent No. 3 has rightly rejected the opposition objections under Sections 11(a), 12(1) and 18(1) of the Act
and whether the order of the respondent No. 3 is contrary to facts and law and the weight of evidence.
Before going into the contentions of the parties relating to question of similarity of rival marks and the likelihood of their causing deception or
confusion, it would be appropriate to refer to few relevant provisions of the Act. Sections 11 and 12 of the Act prohibit the registration of certain
marks. Clause (a) of Section 11 provides that a mark, the use of which would be likely to deceive or cause confusion shall not be registered as a trade
mark and Sub-section (1) of Section 12 of the Act provides that save as otherwise provided in Sub-section (3), no trade mark shall be registered in
respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of
different proprietor in respect of the same goods or description of goods. Section 2(1)(d) of the Act provides that a mark shall be deemed to be
deceptively similar to another mark if it so nearly resembles that other marks as to be likely to deceive or cause confusion. In order to find out the
similarity of marks by comparison, it would be desirable to refer to principles laid down by various Courts. A Division Bench of the Bombay High
Court in Hiralal Prabhudas v. Ganesh Trading Company adverted to the previous decision of the Supreme Court on the subject and held that the Court
must be guided by the following considerations:
What emerges from these authorities is (a) what is the main idea or the salient features, (b) marks are remembered by the general impressions or
by some significant detail rather than a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at
from the view of the first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and
similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g)
marks must be compared as a whole microscopic examination being impermissible, (h) the broad and salient features must be considered for which
the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition, indisputably the nature of
the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.
The Apex Court in the case of Parle Products (P) Ltd. v. J.P. & Co. has laid emphasis on the test of overall similarity.
In the Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 PTC 541, the Supreme Court has laid down the following factors to be taken into
consideration in deciding the question of deceptive similarity:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label marks.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they, require, on their education and intelligence and a degree of care
they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
In yet another case of K.R. Chinna Krishna Chettiar v. Shri Ambal and Co. and Anr. where the respondent was registered proprietor of trade
mark ""Sri Ambal"" and the appellant applied for registration of its trade mark ""Sri Andal"" which was opposed by respondent on ground of deceptive
similarity, the Supreme Court held that there is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long
standing. The Court further held that there is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. It
also held that the resemblance between the two marks must be considered with reference to the ear as well as the eye and hence there is a close
affinity of sound between Ambal and Andal.
The test for comparing the two marks as laid down in Corn Products Refining Co. v. Shangrila Food Products Ltd. & Amritdhara Pharmacy v. Satya
Deo Gupta, are:
(i) The question whether the two marks are so as likely to cause confusion or deceive is one of first impression. It is for court to decide this question.
(ii) The question has to be approached by applying the doctrine of fading memory i.e., from the point of view of a man of average intelligence having
imperfect recollection. (iii) Whether the over all visual and phonetic similarity of the two marks is likely to deceive such a man or cause confusion that
he may make mistake the goods of the defendant for those of the plaintiff. (iv) The other question which arise are: (i) who are the persons who are
likely to be deceived and (ii) what rules of comparison are to be adopted in judging whether such resemblance exists. In Amritdhara case (supra), The
Supreme Court observed at page 453: ""Any unwary purchaser of average intelligence and imperfect recollection would not, as the High Court
supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the component
words as 'current of nectar' ('Amritdhara') or 'current of Lakshman ('Lakshmandhara'). He would go more by the overall structure and phonetic
similarity and the nature of medicine he has previously purchased or has been told about, or about which has otherwise learnt and which he wants to
purchase.
Applying the above principles we would find whether use of the respondent No. 1's mark would be likely to deceive or cause confusion and
whether the trade mark sought to be registered by the respondent No. 1 in respect of the goods or description of goods is identical with or similar to
the trade mark registered in the name of the appellant in respect of the same goods. In the first tribunal the respondent No. 3 has held that when the
rival marks are compared as a whole there is no phonetic similarity in view of the fact that the respondent's mark RUMALAR is a shorted word
ending with the distinct sound 'LAR' whereas the appellants mark is a word ending with the distinct sound 'LAYA'. It is true that both the marks are
short. The appellant's mark consisting of eight letters and the respondent No. 1's mark of seven letters, out of which first six letters 'RUMALA' are
common, and the letters not common thereto are 'YA' and 'R'. When the mark 'RUMALAR' is pronounced the syllable 'R' slurs over which results in
close phonetic similarity between the rival marks. As both the marks are being used in respect of medicinal goods, no deception or confusion can be
allowed howsoever negligible it may be. The medicinal goods being used for human beings in respect of their health, even the slightest confusion may
become hazardous to one's life and as such, the danger is much more to human life. Both the marks convey the same idea that is to say medicinal
goods for treatment of rheumatic disorders. The rival marks are closely similar structurally and visually. Any person of average intelligence who walks
into a shop to buy anti-rheumatic medicine, on looking at the marks will get the first impression that both are similar marks unless he makes a
microscopic inspection of both, therefore, such a purchaser will wonder to think that both the goods are coming from the same source or the average
consumer of ordinary intelligence and imperfect recollection being misled into thinking that the medicine bearing the name RUMALAR is nothing but a
variant of RUMALAYA. The comparison of the marks have to be done as a whole as the unwary purchaser of average intelligence and imperfect
recollection would not split the mark into its component parts and consider the etymological meaning thereof. The class of purchasers who are likely to
buy the goods and the shops which sell the goods are same (trade channels of goods) and when the similar goods are sold at the same counter the
probability of causing confusion is more. The likely purchasers of the goods are all class of society and majority of them are illiterate and semi-literate
persons. Both the goods are pharmaceutical preparations for human use in rheumatic disorder - the appellant's goods are ayurvedic medicine in the
form of tablets and cream and the respondents No. 1's goods are allopathic medicine in the form of tablets. The averment made by Shri Lalitkumar
Ratilal Fozdar, Proprietor of the respondent No. 1, in his affidavit evidence dated 17.5.1982 in support of the application that the appellant's are using
the mark in respect of ayurvedic medicinal preparations whereas mark applied for by the respondent No. 1 is in respect of allopathic preparations and
is a Schedule H drug selling upon the prescription of the registered medical practitioner and therefore chances of deception and confusion are
eliminated is not very credible as has been observed by Courts that even Schedule H drugs are available over the counter. In this regard, we see some
force (though without any documentary evidence) in the averment of Shri S. Narayanan, the Distribution Manager and constituted attorney of the
appellant, made in his affidavit evidence dated 26.2.1982 in support of opposition of the appellant that the appellant's preparation is popular not only
amongst the doctors practicing ayurvedic medicines but also amongst the doctors practicing allopathic medicine and more often they prescribe the
appellant's medicine and besides this, the said medicine is popular amongst the patients who directly purchase the same from the chemists. As both
medicines are sold by same shop, it is very likely that patient asking for RUMALAYA preparation will be offered or sold RUMALAR which will be
dangerous to the public health as the basic ingredients, though for the same ailment, are entirely different. This averment and also the other
surrounding circumstances have not been taken into consideration by the respondent No. 3. The respondent No. 3 has held that the goods of the rival
marks are same but at the same time has opined that the appellants have not completely established their ground under Section 12(1) of the Act. We
have seen that both marks are nearly similar or nearly confusingly similar and the onus is upon the respondent No. 1 to show that his trade mark which
he seeks to register is not likely to deceive or to cause confusion. The Supreme Court has in the case of National Sewing Thread Co. Ltd. v. James
Chadwick & Bros. Ltd. PTC (Suppl) (1) 475 (SC) has held that the burden of proving that the trade mark which a person seeks to register is not likely
to deceive or to cause confusion is upon the applicant and it is for him to satisfy the Registrar of Trade Marks that his trade mark does not fall within
the prohibition of Act and therefore it should be registered. This aspect has totally been overlooked by the respondent No. 3. We have not been able to
persuade ourselves to agree with the conclusion arrived at by the respondent No. 3 that the rival marks are not phonetically similar and the appellant
has not completely established its ground under Section 12(1) of the Act. We are of the opinion that if the registration sought for is granted and the
mark is used in respect medicinal goods mentioned in the application for registration, it is likely to cause deception and confusion.
Now coming to the respondent No. 1's claim to be the proprietor of the mark RUMALAR, the explanation of respondent No. 1 regarding adoption
thereof is that the first three letters have been taken from the word 'RHEUMATIC and the other letters 'ALAR' adopted from his other registered
trade mark 'ALAR' whereas the contention of the appellant is that the explanation given by the respondent No. 1 that the trade mark has been
honestly or independently adopted or used is imaginary and clearly after thought. It is noticed from the Exhibits A and B to affidavit evidence dated
17.5.1982 of Shri Lalitkumar Ratilal Fozdar that initially he applied for licence for the drug Dexamenazone and later on he got the name changed to
RUMALAR on the ground to avoid confusion as a similar name DEXAMETHASONE (common B.P. tablets) available in the market will cause
confusion in the trade. There is no explanation as to why while changing the name he has adopted closely similar mark of the appellant who is
preparing similar medicinal preparation for same ailment. The fact that the name before change to RUMALAR was in conflict with a similar name,
therefore, the respondent No. 1 changed to another near similar name in respect of similar goods would not afford justification to such a change. It is
not the case of the respondent No. 1 that such adoption was a coincidence or he was not aware of the appellant's mark in use. It is no body's case
that the appellant's mark is also coined from the word RHEUMATIC. In para 11 of the affidavit dated 26.2.1982 of Shri S. Narayanan, Distribution
Manager and constituted attorney of the appellant that it is stated the RUMALAYA medicinal preparation is being sold in Gujarat since prior to 1964.
In view of this, the contention that the respondent No. 1's adoption of mark is dishonest appears to be sustainable. The sustainability of this contention
gathers support from the fact that the respondent No. 1, in support of his application for registration, has not given an iota of evidence that he has
incurred any expenses for promotion or popularising the mark whereas the appellant has given a table of expenditure incurred on propaganda and
publicity from 1966 to 1978. In other words, the adoption of the nearly identical mark by the respondent No. 1 appears to be with a view to trade upon
the reputation and goodwill of the trade mark of the appellant.
Regarding allowing the interlocutory petition of the respondent No. 1 for taking his affidavit filed in the civil suit on record as evidence, the
respondent No. 3 has recorded reasons for taking the affidavit on record as evidence and we do not see any illegality committed therein by him.
In view of the above, the appeal must succeed. Accordingly, the order dated 23.11.1989 passed by the learned Deputy Registrar of Trade Marks
is set aside and the opposition No. BOM-4591 is allowed. However, there shall be no order as to costs.