Mount Mettur Pharmaceuticals Ltd. vs Ortha Pharmaceuticals Corporation

Maharajan, J.—This Letters Patent Appeal is directed against the judgment of Ganesan, J. in C. M. A. 278 of 1966 and arises under the

following circumstances. The appellant which is the Mount Mettur Pharmaceuticals Ltd., applied to the Assistant Registrar of Trade Marks.

Madras, for the registration of its trade mark ''Utogynol'' in Part A of the Register in clause 5 in respect of goods which are designated as

''medicinal preparations''. This application was opposed by the respondent, Ortho Pharmaceuticals Corporation, who had registered its trade mark

''Ortho-Gynol'' in India in May 1S43, in respect of the same type of goods, viz., medicinal preparations. The main ground of the opposition was

that the appellant''s trade mark so nearly resembles the respondent''s that it is likely to cause confusion and deception within the meaning of Section

12(1) of the Trade and Merchandise Marks Act, 1958. The Assistant Registrar upheld the respondent''s objection and refused to register the

appellant''s trade mark. The appeal filed by the appellant against the order of the Assistant Registrar was disposed of by Ganesan, J. it is against

the dismissal of the appeal that the present Letters Patent Appeal has been filed.

The contest is between the trade name ''Ortho-Gynol'' of the 1st respondent and the trade name ''Utogynol'' of the appellant. First, we will take

the two words and judge them with reference to their look and their sound. Each of those trade names consists of four syllables, the last two of

which, Gynol are common. The word Gynol does not appear to be a peculiar invention of the respondent-company. ''Gyno'' according to the

Concise Oxford Dictionary means, ''ovary''. It is a shortened form of Gynaeco, which is derived from a Greek word meaning women. The addition

of the letter ''L'' to ''Gyno'' seems to have been effected in accordance with the trade fashion as exemplified by numerous drugs like ''Dettol'',

''Glysol'', ''Ferodol'' etc. In fact, the appellant''s counsel has filed a list before us containing as many as 61 medicinal preparations manufactured by

standard companies ending with the letters ''OL'' out of which 44 end with ''Nol''. The expression ''Gynol'' cannot therefore be said to be an

invention, and consequently, the exclusive property of the first respondent.

There being nothing distinctive about the word ''Gynol'' we shall examine if there is any similarity between the first two syllables of the two trade

names --''Ortho-gynol'' and ''Utogynol''. Orthographically and phonologically ''Ortho'' and ''Uto'' are strikingly dissimilar and even making

allowances for the mispronunciation of illiterate customers and the illegibility of Doctors'' prescriptions, we think there is little likelihood of any

confusion between these two words. The word ''Ortho'' is not an invented word. It is found in the dictionary and is derived from a Greek word.

The meaning of this word is ''straight, rectangular, upright, right, correct etc.'' on the other hand, the word ''Uto'' in the appellant''s trade mark

appears to be an invention. It is not found in the Concise Oxford Dictionary or in the Chambers''s Dictionary. But in Webster''s Third New

International Dictionary Uto-aztecan is found and the meaning of it is given as ''a language phylum comprising the Nahuatlan, Taracahitian, Piman

and Shoshonean families''. We do not think that the appellant should have borrowed this word from Uto-aztecan. He must have invented it for the

purpose of suggesting uterus, as his medicinal preparation is intended to be used orally as a uterine sedative. Doctors, who prescribe these

medicines, can be depended upon to draw the distinction between ''Ortho-gynol'' and ''Utogynol''. Patients, who resort to these ultramodern

medicines, usually belong to the educated class, who can easily distinguish between these two words. The Registrar seems to think that illiterate

Indian women may confuse the one with the other. It is, difficult to imagine that illiterate Indian'' women would have the ability to pronounce these

startlingly un-Indian words. They would rather rely on their doctors'' prescriptions than purchase such medicines on their own.

Reference has been made by learned counsel for the respondent to judicial pronouncements upon the resemblance between ''Sri Andal'' and

''Sri Ambal'' (vide C. Krishna Chettiar v. Ambal and Co., AIR 197O SC 146) between Thanga Baspam'' and ''Thanga Pavun'' N. Arumugam

Pillai Vs. K.S. Syed Abbas and Another, ; between ''Lakshmandhara'' and ''Amritdhara'' Amritdhara Pharmacy Vs. Satyadeo Gupta, and

between ''B.I. Phalogiston'' and ''Antiphologistine'' (vide Bengal Immunity Co. v. D. C Manufacturing Co., ALR 1959 Cal 636). We think that

these authorities can give us no real guidance in deciding whether ''Orthogynol'' and ''Utogynol'' resemble each other in sound and look. We are

clearly of the opinion that they do not. We think that a person who knows one of the two trade marks and has an imperfect recollection of the

other is not likely to be deceived or confused.

As recognised by the Assistant Registrar himself, it is the first two syllables of the word that are most important in the normal enunciation of

words the accentuation would be upon the first word ''Ortho'' or ''Uto'' and not on the second word ''Gynol''. The Registrar says that though this is

the most important feature of the two trade names, it is not conclusive because under Indian conditions and Indian way of pronouncing words it is

the over-all picture and structure of the words that is most important. We are unable to agree. There is nothing in the Indian way of pronouncing

the words which makes for mixing up of such dissimilar, sounding words as ''Ortho'' and ''Uto''. We have compared the two words not only

syllable for syllable but as a whole, and we think that the total sound effect of the words lacks any similarity. So also when the words are written

down and compared, they do not have any similarity, which can deceive the eye of the layman.

We may also note that the respondent has failed to adduce any positive evidence that confusion or deception has been actually caused in the

Indian market as a result of the alleged resemblance. It is true that the appellant''s trade name like that of the respondent will be applied to the same

kind of goods viz., medicinal preparations. But then the dissimilarity between the two trade names is a sufficient guarantee against the unwary

purchaser mistaking the goods of the appellant for those of the respondent. In the civil miscellaneous appeal before the learned Judge the appellant

has filed an affidavit in October, 1969. It was filed to meet the objection of the respondent that the appellant may, if his trade mark is registered,

use it in respect of medicinal preparations not only in liquid or pill form but also in the form of a jelly, which is the form in which ''Ortho-gynol'' is

being prepared. In order to obviate this objection the appel- lant has undertaken that the appellant company will not use the preparation

''Utogynol'' except in the form of a liquid or tablet to be taken, orally. Learned counsel for the respondent says that in case this court decides to

direct registration of ''Utogynol'', the conditions embodied in the affidavit of the appellant may be imposed upon the appellant We record the

undertaking of the appellant and direct registration of ''Utogynol'' on condition that the appellant-company shall not use this trade name in respect

of any oreparation except in the form of a liquid or a tablet to be taken orally. The order of the Assistant Registrar is set aside as he has failed to

exercise his discretion judicially, and the judgment of the learned Judge is also reversed as he erred in refusing to set aside the order of the

Assistant Registrar. The Letters Patent Appeal is allowed with cost as indicated above.