Corn Products Refining Co. vs Shangrila Food Products Ltd.

Rewritten Version Notice: This is a rewritten version of the original judgment.

Court: Supreme Court of India

Case Number: Not extracted

Decision Date: 8 October 1959

Coram: A.K. Sarkar, J.L. Kapur, S.K. Das

In the matter titled Corn Products Refining Co. versus Shangrila Food Products Ltd., decided on 8 October 1959, the Supreme Court of India recorded a bench consisting of Justices A K Sarkar, J L Kapur, and S K Das, with Justice Sarkar authoring the judgment. The appeal before the Court originated from an application filed under the Trade Marks Act, 1940, hereinafter referred to as the Act, for the registration of a trade mark. The application was submitted by the respondent, a manufacturer of biscuits, and it was opposed by the appellant.

The respondent, engaged in biscuit manufacturing, lodged its trade-mark application on 5 November 1949 seeking registration of the mark “Gluvita” for the goods enumerated in class 30. Subsequent investigation revealed that the respondent had not used the mark prior to the filing date. The Registrar directed that the application be advertised before any registration could be granted, and the respondent consented to limit the registration to biscuits, which fell within one of the categories specified in class 30. The appellant, a corporation organized under the laws of the State of New Jersey in the United States, had on 31 August 1942 registered the identical mark “Glucovita” under the Act in class 30 for “Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient in food; glucose for food.” On the same day, the appellant also secured registration of the same mark in class 5 for “Infants’ and invalids’ foods.” The appellant opposed the respondent’s application on the grounds that registration should be refused pursuant to sections 8(a) and 10(1) of the Act, to which the respondent filed a counter-statement. Both parties submitted affidavits supporting their respective positions. The Deputy Registrar concluded that, for the purpose of section 12, biscuits classified in class 30 were not the same description of goods as glucose powder mixed with vitamins, also placed in class 30. He further held that the marks “Glucovita” and “Gluvita” were neither visually nor phonetically similar, and that no reasonable likelihood of deception or confusion existed. Applying the precedent set in In re: an application by Smith Hayden & Coy. Ld. [(1945) 63 R.P.C. 97], the Deputy Registrar found that the absence of the syllable “co” in the respondent’s mark created a sufficient distinction to preclude deception. He also noted that the appellant had acquired reputation and goodwill in the public for its mark “Glucovita” as applied to glucose powder mixed with vitamins. The appellant thereafter appealed the Deputy Registrar’s order to the High Court at Bombay, where the matter was heard by Justice Desai exercising original jurisdiction. The appeal was not aggressively pressed on the issue of whether the goods were of the same description, and Justice Desai himself concluded that they were not.

In the proceeding before the High Court, the learned judge first concluded that the two marks were not identical, and consequently held that the registration could not be refused under section 10(1) of the Trade Marks Act. The judge affirmed the Deputy Registrar’s finding that the appellant had acquired a reputation among the public for the mark “Glucovita” in connection with glucose powder mixed with vitamins. However, the judge dissented from the Deputy Registrar’s view that the respondent’s proposed mark was unlikely to cause deception or confusion. He determined that the two marks were sufficiently similar to be reasonably likely to cause deception and confusion among consumers. On that basis, he set aside the Deputy Registrar’s order and held that the respondent’s mark could not be registered in accordance with section 8(a). The respondent subsequently appealed this judgment, and the appeal was heard by the Chief Justice and another judge of the same High Court. The appellate bench concluded that there was no evidence that the appellant’s mark had acquired a reputation among the general public; they observed that the evidence showed the mark was known only among discerning trade persons who were unlikely to be deceived or confused. Accordingly, they reasoned that a public unaware of the appellant’s reputation would not be misled by the respondent’s use of its proposed mark. The appellate judges also noted that the evidence demonstrated the existence of several marks containing the prefixes or suffixes “Gluco” or “Vita,” and therefore it could not be said that these common elements were uniquely associated with the appellant’s goods. On these two grounds, they held that the respondent’s proposed mark was not likely to cause confusion or deception, set aside the earlier judgment of the first judge, and restored the Deputy Registrar’s order. The appellant then appealed to this Court against the decision of the appellate judges. The appellant had contested the registration of the respondent’s mark under both section 8(a) and section 10(1). To invoke section 10(1), the appellant needed to demonstrate that its mark had been registered for the same goods or description of goods for which the respondent sought registration. The decisions of the Deputy Registrar and the first judge were unfavorable to the appellant on that point. Both before the appellate judges and before this Court, the appellant maintained that the goods were not of the same description, thereby removing the applicability of section 10(1). Consequently, the only remaining issue for determination was whether section 8(a) barred the registration of the respondent’s mark.

In this case the Court observed that the High Court’s conclusion that there was no evidence that the appellant’s trade mark had acquired a reputation among the public could not be sustained. The appellate judges had relied on the affidavits filed by the appellant, in which the appellant asserted that “Glucovita is a well-known mark in the trade” and had limited that description to the appellant’s own products. The Court thought that the learned appellate judges gave the phrase “in the trade” an unduly narrow meaning, restricting it to tradespeople only. In the Court’s view those words could also refer to the public at large, and if so they would themselves constitute evidence that the appellant’s mark had acquired a reputation among the public. Apart from this interpretation, the Court found additional material on record that supported the conclusion that the appellant’s mark had indeed achieved public reputation. The appellant, in its opposition, had categorically stated that its mark had acquired a reputation among the Indian buying public, and the respondent’s counter-statement contained no clear denial of that assertion. Moreover, there was ample evidence that the appellant’s goods bearing the mark “Glucovita” were sold in very large quantities in small containers of one-pound and four-ounce capacities. The small size of the containers indicated sales to the general public, because sales to tradespeople for industrial purposes would normally be made in bulk and in much larger containers. The appellant had also incurred considerable expenditure on advertising the “Glucovita” mark in ordinary popular journals, suggesting that the goods enjoyed widespread sale among the general public. The most persuasive evidence, however, came from affidavits filed by the respondent itself. In the affidavit of K. M. Jamal, a partner in the firm of Pawar and Co., the respondent stated that “a number of customers come to buy the products ‘Gluvita’ and the products ‘Glucovita’.” Similar statements appeared in eight other affidavits. The Court held that these affidavits made it perfectly clear that the appellant’s mark had acquired a reputation among the general buying public. In addition, the Court referred to the respondent’s grounds of appeal against the judgment of Desai, J., noting that the respondent did not dispute, and in fact assumed, that the appellant’s mark had acquired a reputation among the public. Consequently the Court was fully satisfied that the appellant had established that its mark had acquired a reputation among the buying public. Regarding the question of reputation, the Court observed that the appellate judges had fallen into another error. They had said that a commodity may acquire reputation by being made by a particular manufacturer and that consumers may require the commodity made by that manufacturer rather than the commodity itself. The Court disagreed, holding that what is required is that the reputation attach to the trade mark itself, evidenced by the public’s association of that trade mark with certain goods, regardless of whether the buyer knows the identity of the manufacturer.

It was observed that only in the situation where the public specifically demands the commodity made by a particular manufacturer can it be said that the commodity has acquired a reputation among the public. The affidavits placed before the Court do not contain any indication that the buying public preferred the ‘Glucovita’ powder mixed with vitamins only when it was manufactured by the respondent and not by any other producer. The Court noted that the respondent mentioned by the learned Judge is, in fact, the appellant in the present case. The Court expressed disagreement with the view put forward by those judges. It was further explained that the essential requirement is that the reputation must be attached to the trade mark itself and that the public must appear to associate that trade mark with particular goods. The reputation in question, therefore, is the reputation of the trade mark, not the reputation of the maker of the goods that bear the trade mark. The Court clarified that a trade mark may acquire a reputation in relation to the goods for which it is used even if the purchaser does not know the identity of the manufacturer of those goods. Consequently, the Court held that it would be incorrect to state that the appellant’s trade mark had failed to acquire any reputation among the general public and, on that basis, to conclude that there was no reasonable possibility of confusion or deception arising from the respondent’s proposed mark. The Court also addressed the second ground relied upon by the learned appellate Judges. They had argued that the existence of several trade marks containing the prefix or suffix ‘Gluco’ or ‘Vita’ made it impossible to say that the common elements ‘Glu’ and ‘Vita’ were uniquely associated with the appellant’s products. This argument was founded on a passage quoted from the seventh edition of Kerly on Trademarks, page 624, which summarized the principle that when a series of marks—registered or unregistered—share a common feature or syllable and are owned by different persons, the presence of the common feature tends to assist the applicant whose mark contains that feature. The Court pointed out that this statement in Kerly’s treatise is based on the decision in In re: an application by Beck, Kollar and Company (England) Limited, reported in 64 R.P.C. 76. The Court stressed that, as will be shown, the Beck, Kollar case makes clear that before an applicant can rely on the existence of a number of marks with one or more common features that also appear in his own mark, the applicant must first demonstrate that those other marks have acquired a reputation through actual use in the market. To illustrate this point, the Court read a portion of the judgment at pages 82 and 83 of the Beck, Kollar case, which contains the observation that the “series” objection is fundamentally based on the reputation acquired by the user.

In the passage under consideration, the Court explained that the inference which the Registrar was required to draw was that traders and the public had acquired such knowledge of the common element or characteristic of a “series” of marks that, upon encountering another mark possessing the same characteristic, they would instantly associate the later mark with the series of marks already familiar to them. The Court, however, expressed the view that this statement did not necessarily compel the entire issue to be resolved solely under the provisions of section 11, and it proceeded to elaborate on this point. The Court observed that, when an application for registration was pending before the Registrar, a search for conflicting marks frequently uncovered several marks that shared a characteristic feature with the mark in the application. Those conflicting marks might be recorded in the Register either under a single proprietor or under several different proprietors. At that stage, the matter was essentially between the applicant and the Registrar, and the Registrar ordinarily possessed no evidence as to whether the registered marks were actually being used. Nevertheless, in forming an opinion under Section 12 regarding the likelihood of confusion or deception, the Court held that the Registrar was bound, in the absence of contrary evidence, to presume that, at least on a prima facie basis, some of the registrations had been effected in good faith by persons who, at the date of their respective applications, were either using the marks or intended to use them in the near future. Consequently, if all of the marks were owned by a single proprietor, the Registrar would presume that the proprietor was employing a “series” of marks and would evaluate the conflict between the applicant’s mark and each of the proprietor’s marks with that consideration in mind. The Court further clarified that, where the registrations consisted merely of the same word registered separately for several articles within a single class of the Trade Marks Schedules, the Registrar would generally treat those registrations as equivalent to a single registration covering all the items, because they would not constitute a “series” as presently discussed. Conversely, if the registered marks identified in the search were owned by several different proprietors, the Court noted that this circumstance could significantly aid the applicant, who could argue that the common characteristic was a well-recognised element in marks already in use within the relevant trade. In short, when the Registrar compared the applicant’s mark with the marks already recorded, the Court affirmed that, applying the principles laid down in the “Pionotist” case, the existence of additional marks on the Register beyond the one directly compared was to be regarded as a surrounding circumstance that the Registrar was required to consider. However, the Court pointed out that, when the same question arose before the Registrar in opposition proceedings, the Registrar could no longer rely on any presumption regarding the surrounding circumstances; instead, before drawing any inference based on the use of other marks, the Registrar had to be furnished with evidence establishing such use.

In the earlier discussion the Court observed that any inference drawn on the basis of the use of other marks, whether favoring the applicant or the opponent, must be supported by evidence. The Court referred to the case of Harrods Ltd. Application, reported in 52 R.P.C. at page 70, line 1. 39 through page 71, line 1. 15, where the Registrar declined to make the necessary inference in favor of the applicants because the required proof was absent. The Court then stated that there is no reason to believe that the author of the work known as Kerly intended to depart from the principle articulated in the passage just read, which was drawn from the decision in Beck, Kollar & Co.’s case. The Court further mentioned the decision In re: Harrods’ Application, cited in 52 R.P.C. 65 and quoted in the discussion of Beck, Kollar & Co.’s case at 64 R.P.C. 76, noting the comments made on page 70 of that judgment.

The Court explained that a well-recognised principle must be considered when assessing the possibility of confusion between two trademarks. That principle holds that when two marks share a common element that also appears in several other marks used in the same market, the commonality tends to make purchasers focus more closely on the remaining distinctive features of each mark in order to tell them apart. For this principle to apply, the marks containing the common element must be in fairly extensive use and must be used in the market where the marks under consideration are or will be offered. Consequently, a series of marks that contain the common element can only aid the applicant if those marks enjoy extensive market use. The burden of proving such use rests on the applicant who wishes to rely on the series of marks. In the present case, the respondent, who is the applicant before this Court, failed to produce any evidence demonstrating the use of marks that contain the common element. The Deputy Registrar merely inspected the register and identified a large number of marks that bore either “Gluco” or “Vita” as a prefix or suffix. The Court emphasized that the mere presence of a mark in the register does not establish its actual use; a mark may be registered yet remain unused. Therefore, no inference of use may be drawn solely from a mark’s registration. The Court indicated that, if authority on this point is required, reference may be made to Kerly at page 507 and to Willesden Varnish Co. Ltd. v. Young & Marten Ltd., reported in 39 R.P.C. 285 at page 289. Moreover, the appellant’s affidavit claimed that biscuits in the market bore the names “Glucose Biscuits,” “Gluco biscuits,” and “Glucoa Lactine biscuits.” However, the Court held that those names are ordinary dictionary words, confer no exclusive right, and do not constitute marks with a common element that could assist the respondent in this proceeding.

The Court observed that the marks at issue possessed a common element or elements. Accordingly, it concluded that the learned appellate Judges erred in holding in favour of the respondent on the basis of a series of marks that bore either the prefix ‘Gluco’ or the suffix ‘Vita’. The Court had previously noted that, in its view, the mark ‘Glucovita’ had acquired a reputation among the general buying public. The next question, therefore, was whether the marks ‘Glucovita’ and ‘Gluvita’ were so similar that they were likely to cause confusion or deception among consumers. The Court did not have the benefit of any opinion expressed by the learned appellate Judges of the High Court on this particular point, as they had not addressed it in their judgment. Nevertheless, the Court was inclined to think that the High Court would have answered the question affirmatively. By contrast, the Deputy Registrar had held that the two words were not sufficiently similar to create a likelihood of confusion or deception. He reasoned that the syllable ‘co’ in the appellant’s mark was an emphatic characteristic that would not be slurred over, and that this syllable would prevent any confusion or deception arising from the concurrent use of the two marks. The Deputy Registrar further applied the test articulated in the “Ovax” case (In re: an application by Smith Hayden and Co. Ltd. [63 R.P.C. 97]), holding that the emphatic nature of the second syllable in ‘Glucovita’ eliminated any likelihood of confusion. Desai, J. disagreed with the Deputy Registrar’s conclusion.

The Court agreed with Desai, J. that the view expressed by the Deputy Registrar was incorrect. It noted that the determination of whether two marks are likely to cause confusion is a question of first impression that must be decided by the court. The Court cautioned that reliance on English authorities, which are based on English pronunciation by English speakers, may not be of much assistance in the Indian context, where phonetic similarity may be perceived differently. Moreover, the Court emphasized that the word in question is an English term that is foreign to the majority of Indian consumers. In assessing similarity between two marks, the Court affirmed the well-recognised principle that the marks must be considered as a whole. Applying this principle, the Court found itself aligned with Desai, J. in concluding that the marks in the present dispute are substantially similar. Apart from the syllable ‘co’ in the appellant’s mark, the two marks are identical, and the Court held that this syllable does not, in the opinion of the Court, enable Indian buyers to distinguish one mark from the other. The Court also concurred with Desi, J. that the underlying idea conveyed by the two marks is the same, namely the ideas of glucose and life-giving properties.

The Court noted that the marks convey the ideas of properties of vitamins. It referred to the Aquamatic case (Harry Reynolds v. Laffeaty's Ld.) [1958 R.P.C. 387] as a recent decision where the test of commonness of the idea between two marks had been applied to determine similarity. The Court reiterated that the assessment of similarity must be made from the viewpoint of a person of average intelligence who possesses an imperfect recollection of the marks. From that perspective, the overall structural and phonetic similarity together with the similarity of the underlying idea is reasonably likely to cause confusion between the marks. The respondent argued that the goods fell under different descriptions and therefore, despite the similarity of the marks, there was no risk of confusion or deception. The Court rejected this contention. While it accepted that, for the purposes of section 10(1) of the Act, the goods must be treated as not being of the same description, it observed that evidence showed glucose is used in the manufacture of biscuits. This fact created a trade connection between the appellant’s glucose product and the respondent’s biscuits. An ordinary purchaser could therefore reasonably infer that the ‘Gluvita biscuits’ were made using the appellant’s ‘Glucovita’ glucose. The Court cited the “Black Magic” case (In re: an application by Edward Hack [58 R.P.C. 91]), where the goods were chocolates and laxatives and it was proved that laxatives were often produced with chocolate coatings, and it considered that trade connection as a factor leading to a likelihood of confusion. It also referred to the “Panda” case (In re: an application by Ladislas Jellinek [63 R.P.C. 59]), where the goods were shoes and shoe polishes. The Court observed that because shoe polishes are applied to shoes, there existed a trade connection that could give rise to confusion even though the goods were distinct, and noted that the application for registration had been refused under the provision of the English Act corresponding to section 8 of the present Act because the shoe manufacturers had not established a public reputation for their trademark.

The Court further observed that in both the “Black Magic” and “Panda” cases the competing trademarks were exactly identical, a circumstance that did not obtain here. However, it held that this difference was immaterial. The absolute identity or close resemblance of the marks is only one factor in determining the likelihood of deception or confusion. Trade connection between different goods constitutes another independent factor. By definition, the trade-connection test applies when the goods are different, and the two tests operate independently of each other. Consequently, there is no reason to exclude the trade-connection test merely because the marks closely resemble each other. Both the similarity of the marks and the existence of a trade connection between the appellant’s glucose and the respondent’s biscuits may, taken together, render an average purchaser likely to be confused or deceived.

In this case, the Court noted that when two marks closely resemble each other, the same principles apply as in the earlier “Black Magic” and “Panda” decisions, even though in those cases the marks were identical. The Court explained that determining whether a likelihood of deception or confusion exists requires applying the relevant tests to the particular facts of each case. The appellant argued that biscuits containing glucose are produced with liquid glucose, while the appellant’s own mark relates only to powder glucose. The Court assumed, for the sake of argument, that biscuits with glucose are indeed made using liquid glucose, but observed that there is no evidence that an average purchaser knows whether the glucose in such biscuits is liquid or powder. The Court found that a trade connection between glucose and biscuits, and a resulting likelihood of confusion, was demonstrated by the appellant’s evidence that a tradesman had inquired about biscuits to be manufactured under the appellant’s mark “Glucovita”. That tradesman apparently believed that the maker of “Glucovita” glucose would also be capable of producing biscuits containing glucose, and did not concern himself with the form of glucose used. Further, an affidavit filed by the appellant recorded that the respondent’s director had told the appellant’s manager that the respondent had chosen the name “Gluvita” to indicate that glucose was used in its biscuit production. The respondent did not contest these statements. Consequently, the Court concluded that a trade connection between glucose and biscuits was established. Considering the similarity of the two marks, the Court held that the goods were sufficiently connected to make confusion or deception likely. The Court affirmed that the earlier decision of Desai, J. was correct. Accordingly, the Court set aside the order of the learned appellate judges of the High Court and restored the order of Desai, J. The appeal was allowed, and the appellant was awarded costs against the appellate judges both in the High Court and in this Court. The appeal was therefore allowed.