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(b) Trade Marks Act (V of 1940),

S. 10‑Test‑Evidence of user entirely irrelevant for purposes of S. 10‑Identity or resemblance‑Only test.

In a case under section 10 of the Trade Marks Act, 1940 the evidence of user is entirely irrelevant. The only test that has to be applied when the Court is considering a case under section 10 is the test of identity or resemblance. Even if the applicant could establish a long user, if the respondent could establish no user at all, if there was resemblance between the Marks of the applicant and the respondent, and if there was likelihood of deception, and if the respondent was first in the field and had their Trade Mark registered, the applicant's Trade, Mark could not be registered.

(c) Trade Marks Act (V of 1940),

S. 10‑Court's duty mainly towards public‑Registrar's discretion properly exercised‑Not to be interfered with.

In considering an application under section 10 of the Trade Marks Act, the main duty of the Court is towards the public and maintenance of purity of the register. When a case is sought to be made out that a particular Trade Mark is likely to deceive and create confusion, the contest is not so much between the parties to the litigation as it is a contest between a party defending his right to a particular Trade Mark and the public, and the decision of the Registrar in such a case must carry considerable weight with any Court or Tribunal which is to review its decision. If the Registrar has exercised his discretion properly, High Court would be loath to interfere with his order.

Asrarul Hossain for Moinul Huq for Appellant.

Sultan Hossain Khan for Respondent No. 2.

JUDGMENT

AKBAR, J.‑

This is a Trade Mark appeal, and it came to be filed under the following circumstances : L. R. Khan, the sole proprietor of New Light Chemical Industries filed an application being Application No. 20783 to the Registrar, Trade Marks, Chittagong, on the 13th October 1953, for registration of the Trade Mark consisting of the word

"LIVERGIN",

Letter NLCI' and a small device of an Eagle on a carton. These marks are used in connection with a paten medicine. As the aforesaid Trade Marks were likely to lead to confusion between the medicine sold under the name

"LIVERGIN"

and those sold by British Drug House Ltd., under their registered Trade Mark No. 9214

"LIVOGEN",

the Trade Mark Registry, Karachi, took objection to the registra tion of the applicant's Trade Mark. On 12th January 1955 the Registrar, Chittagong, issued notice on the applicant asking him to show cause why the Trade Mark should not be refused registration on the ground that a similar Trade Mark was already on the register as Trade Mark No. 9214. On 4th April 1955 the applicant answered the notice by stating that his Mark was sufficiently dissimilar from the registered Mark No. 9214 inasmuch as Eagle appearing in his Mark distinguished it from the registered Mark. He further contended that there was also difference in the name

"LIVERGIN"

and

"LIVOGEN"

. On 25th October 1955, the authorised agent of the proprietor of Registered Trade Mark No. 9214 was asked to snake his state ment, if any, in the matter. On 10th December 1955, the said agent wrote to the Registrar objecting to the registration of the applicant's Trade Mark on the ground "that the words

LIVERGIN' LIVOGEN'

are for all practical purposes identical in pronunciation". The Registrar then enquired from the applicant if he claimed a hearing in the matter, but the applicant did not reply to the letter.

2. On 18th April 1956, Trade Mark Registry, Karachi, sent the applicant a reminder. On 23rd January 1958, i.e., after more than two years, applicant wrote to the Registry Office at Karachi saying that his Mark does not conflict with the registered Trade Mark No. 9214. The said application was sent to the Registrar, Chittagong, for disposal, and the matter was heard by him on 29th January 1959, and 11th February 1959. The Registrar, being of opinion that the applicant's Mark, closely resembled the registered Trade Mark, and was likely to cause confusion, rejected the application. The Registrar also observed that the applicant had not succeeded in making out a case of honest concurrent user.

The applicant has, therefore, filed this appeal.

3. Mr. Asrarul Hossain, the learned Counsel for the appellant, has contended that, there being a distinguishing feature in the make‑up of

"LIVERGIN"

, the Registrar was not justified in rejecting the application. Relying on the decision of Messrs Modi Sugar Mills Limited v. Tata Oil Mills Co., Ltd., Bombay (A I R 1943 Last. 196), he has argued

(1) that the applicant's Trade Mark has to be taken as a whole, and too much stress should not be laid on slight similarity in one part of it ; and

(2) that in judging the probability of deception the Court should consider whether the average purchaser buying with ordinary caution was likely to be misled by some similarity in the Trade Mark.

The above test was laid down in the Lahore case in a passing‑off action. We must at once point out that the approach under section 10 of the Trade Marks Act is not the same as in the passing‑off action. Tek Chand, J. observed in the Lahore case (at page 203):

"In an action for infringement, therefore, if the matter is in dubio, the plaintiff must fail. In applications for registration, however, in the case of doubt the application ought to be disallowed. As succinctly put in Halsbury's Laws of England (Hailsham Edition), Vol. 32, para. 899, page 592

"In the first case (i.e., case of infringement and passing‑off) the burden of showing probability of deception is on the plaintiff, while in the second (appeal against Registrar's refusal) all reasonable possibility of deception has to be disproved by the applicant."

Hence, in considering an application under section 10 of the Trade Marks Act, the Registrar has to see whether the applicant's Trade Mark is likely to deceive or mislead the trade A or the public. We have, therefore, to see if the use of the words

"LIVERGIN"

in the Trade Mark to which the applicant asserts his right 'to register would be likely to deceive the public. Whether it would or it would not have a misleading effect is the only question that arises for decision in this case.

4. Both "LIVERGIN"

and "LIVOGEN"

are used for liver troubles. The question that we have to consider is whether a member of the public buying medicine carrying the name of "LIVERGIN

" is likely to be deceived into, believing that he is buying "LIVOGEN"

of British Drug House, Ltd. In such a case the Court has to consider first if there is any resemblance between the words "LIVERGIN

" and LIVOGEN

".

5. In case of Mc Dowell v. Standard Oil Company (New Jersey) and another (1920 A C 632v), the question whether the word "NUVOL

." was calculated to lead to confusion between the goods under the Trade Mark "NUJOL

", Viscount Cave, L. C. observed (at page 638):

"My Lords, here we start with the fact that the two words Nuvol' and Nujol' are both invented, and to most people meaningless words, and are almost identical both in spelling and in sound, for there is a difference only of one letter in the middle of the word, and unless pronunciation is very distinct it is not difficult to mistake one word when spoken for the other."

His Lordship then came to the following conclusion‑

"Upon the whole I am not satisfied that if this Mark were registered there would be no risk of confusion, and I think it is unfortunate that the appellant having had his attention called to the respondents' Trade Mark, did not then withdraw his application, but preferred to take the risk of a successful opposition."

I think the above observations of Viscount Cave, L. C. are fully applicable to the present case. In this connection reference may also be made to the following observations of the House of Lords in Aristoo Ltd. v. Rysta Ltd. ((1945) 62 R P C 65). In the above case the House of Lords, while considering the resemblance between "Aristoo" and "Rysta" cites the following passage of Lord Justice Luxmoore in the Court of Appeal with full approval

" The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938 (which corresponds to section 10), must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection, and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. The tendency to slur a word beginning with a' is generally speaking very common, and the similarity between Rysta' and Ristoo' would, I think, be fairly obvious. It would not be surprising to learn that a person asking for Aristoo' stockings from a shop assistant who only knew Rysta' stocking had been supplied with the latter and vice versa."

In our opinion, there is both a visual and phonetic resemblance between the words "LIVERGIN

" and "LIVOGEN

". It seems to us that in this case there is an attempt to have a name, which approximated to the name associated with the products of another Company. We are, therefore, of opinion that the resemblance between the two Marks being clear and obvious, the Registrar was justified to hold that the applicant's Trade Mark was likely to lead to confusion.

6. Mr. Asrarul Hossain has next contended that his client has used this Mark since 1948, and hence the Registrar should have granted registration on the ground of long user. In the affidavit filed by an employee of the applicant, it is stated that they were using the Mark "LIVERGIN

" since August 1948. In another affidavit it is, however, stated that they were using it since 1950. In December 1955, the Registrar asked the applicant if he wanted a hearing of his application, and the applicant with some ulterior motive did not give any reply for two years. In any event, we do not consider the use of the name for a sufficiently long time so as to give him some sort of a right to the name.

7. In this connection, I may observe that in a case under section 10 the evidence of user is entirely irrelevant. The only test that has to be applied when the Court is considering a case under section 10 is the test of identity or resemblance. Even if the applicant could establish a long user, if the respondent could establish no user at all, if there was resemblance between the Marks of the applicant and the respondent, and if there was likelihood of deception, and if the respondent was first in the field and had their Trade Mark registered, the applicant's Trade Mark could not be registered.

8. It must be remembered that, in considering and application under section 10 of the Trade Marks Act, the main duty of the Court is towards the public and maintenance of purity of the register. When a case is sought to be made out that a particular Trade Mark is likely to deceive and create confusion, the contest is not so much between the parties to C the litigation as it is a contest between a party defending his right to a particular Trade Mark and the public, and the decision of the Registrar in such a case must carry considerable weight with any Court or Tribunal which is to review its decision. If the Registrar has exercised his discretion properly this Court would be loath to interfere with his order. In this case, apart from the question of discretion, we have considered the matter on merit, and in our opinion the Registrar has rightly refused to register the Trade Mark in this case.

In the result, we dismiss this appeal with costs assessed at Rs. 200.

SIDDIKY, J‑‑1 agree.

S. B./A. H.

Appeal dismissed.

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