Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical Laboratories

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

Court: Supreme Court of India

Case Number: Civil Appeals No. 522 and 523 of 1962

Decision Date: 20 October 1964

Coram: N. Rajagopala Ayyangar, P.B. Gajendragadkar, J.C. Shah

In this case the Supreme Court of India recorded that the dispute arose between Kaviraj Pandit Durga Dutt Sharma, who was the petitioner, and Navaratna Pharmaceutical Laboratories, who was the respondent. The judgment was delivered on 20 October 1964. The opinion was authored by Justice N. Rajagopala Ayyangar and was pronounced by a bench consisting of Justice N. Rajagopala Ayyangar, Chief Justice P. B. Gajendragadkar and Justice J. C. Shah. The citation of the decision appears as 1965 AIR 980 and 1965 SCR (1) 737. The matters before the Court involved the Trade Marks Act of 1940, specifically section 6 and the proviso to section 6(3), which concerns the scope of action for infringement of trademarks and the action for passing off of goods.

The factual background set out that the respondent, a firm engaged in the manufacture of medicinal products, had been the proprietor of two registered trademarks, namely “Navaratna” and “Navaratna Pharmaceutical Laboratories,” both of which had been in use prior to 25 February 1937. The petitioner, who was also a manufacturer of medicinal preparations, applied to register the words “Navaratna Pharmacy” as his own trademark. The respondent objected to that application and succeeded in having the registration refused. Subsequently the petitioner moved the Registrar of Trade Marks seeking the removal of the mark “Navaratna” from the register and also requesting that the word “Navaratna” be deleted from the respondent’s other trademark. The Registrar directed the petitioner to approach the High Court for rectification, noting that the respondent had already instituted a suit in the District Court seeking a permanent injunction to restrain the petitioner from selling any preparation bearing a mark that contained the word “Navaratna.” The petitioner therefore filed an original petition in the High Court. The District Court had decreed in favour of the respondent with respect to the trademark “Navaratna Pharmaceutical Laboratories.” The petitioner appealed against that decree, and his original petition was heard together with the appeal in the High Court. The High Court confirmed the decree of the District Court in favour of the respondent. In reaching its decision the High Court held three points. First, considering the method of packing adopted by the petitioner, the Court found that the petitioner was not guilty of passing off. Second, the Court held that the respondent could not obtain any relief on the ground of infringement of the mark “Navaratna” because the term was a common word in Ayurvedic phraseology and was used in connection with several medicinal preparations. Third, the Court observed that the trade name “Navaratna Pharmaceutical Laboratories” had been used by the respondent as a trademark for a very long period, that it had become exclusively associated with the respondent’s goods, and that, because the mark had been in use before the specified date of 25 February 1937 and had acquired factual distinctiveness, it was registerable under the proviso to section 6(3) of the Trade Marks Act, 1940.

When the matter reached the Supreme Court, the petitioner contended that the High Court’s finding that the trademark “Navaratna Pharmaceutical Laboratories” was validly registerable was inconsistent with its earlier finding that the word “Navaratna,” the essential element of the trademark, was merely descriptive and therefore could not confer exclusive rights. The petitioner thus argued that the High Court’s conclusions on the validity of the respondent’s mark and on the descriptive nature of the word “Navaratna” were contradictory.

In this case, the Court observed that the appellate finding that the marks of the appellant and respondent were deceptively similar conflicted with the earlier finding that the packaging in which the appellant’s goods were marketed was not likely to cause confusion or to deceive purchasers. The Court then set out its holdings. First, it held that a trademark which does not satisfy the requirement of being “adapted to distinguish” under section 6(1) of the Trade Marks Act may nevertheless be registered if it can demonstrate acquired distinctiveness under the proviso to section 6(3). The proviso applies to marks that have been in use before 25 February 1937 and provides that the Registrar shall not refuse registration solely because the mark is not adapted to distinguish, and may accept evidence that the mark has acquired distinctiveness sufficient for registration. The Court explained that the term “distinctiveness” in the proviso cannot be interpreted as synonymous with “adapted to distinguish”; otherwise the proviso would add nothing to the statute and would treat old and new marks identically. Consequently, the Court rejected any construction that would place pre‑1937 marks on the same footing as marks first used after that date and subject them to the same registration tests. Nevertheless, the Court recognized that a mark used before the specified date might still fail to qualify for registration if it had not acquired the requisite factual distinctiveness in the Registrar’s view. Accordingly, when the Registrar records that a mark is “not adapted to distinguish”, he is empowered to admit evidence of acquired distinctiveness. Applying this principle, the Court noted that both the trial court and the High Court had found that the respondent’s mark, having been continuously used since 1926, had become exclusively associated in the market with the respondent’s pharmaceutical products. On that basis, the Court concluded that the respondent’s registration was proper and that he was entitled to protect his rights, including by obtaining a perpetual injunction against any infringement.

In the second part of its reasoning, the Court held that in a trade‑mark infringement proceeding the plaintiff bears the burden of proving that the defendant’s mark is deceptively similar to the plaintiff’s registered mark. This proof must be based on a comparative analysis of the two marks, because the required degree of resemblance cannot be defined by any fixed objective standard. Where the Court finds that the visual, phonetic or overall impression of the two marks is so closely alike that it creates an invitation to purchase, no additional evidence is needed to establish a violation of the plaintiff’s rights. The Court further stated that differences in the goods, packaging or other indicia that might suggest a different trade origin are immaterial when the marks themselves are sufficiently similar. Although a finding concerning the packaging may have relevance in a passing‑off claim, it plays only a limited role in a statutory infringement action, where the statutory right to exclusive use of the mark and the remedy under section 21 dominate. Consequently, the Court affirmed that the lower courts’ conclusion that the appellant’s mark was deceptively similar to the respondent’s could not be disturbed, absent any error in the test applied.

In this case the Court explained that the doctrine of passing off was relevant only to the extent that it supported a claim for relief, but it played a limited role in an action for infringement of a registered trade mark where the registered proprietor possessed a statutory right to the mark and a statutory remedy under section 21 for protecting his exclusive right to use it. The Court held that the question of whether two marks were deceptively similar was a matter of fact, and that unless the test applied by the trial courts suffered from error, the appellate Court would not interfere with their findings. Because no such error was identified, the Court affirmed the conclusions of both lower courts that the appellant’s mark was deceptively similar to the respondent’s mark, and therefore the appellate courts could not disturb those findings [754 D-F; 755 A-C, F-G; 756 F-H]. The judgment was issued in the Civil Appellate Jurisdiction under Civil Appeals No 522 and 523 of 1962, which were taken on special leave from the judgment and order dated 30 November 1960 of the Kerala High Court in A.S. No 233 of 1959 and O.P. No 19 of 1952. Counsel for the appellant appeared in both appeals, while counsel for the respondent also appeared in both. The judgment was delivered by Justice Ayyangar. The two appeals concerned the validity of the respondent‑firm’s claim as the registered proprietor of the trade mark “Navaratna Pharmaceutical Laboratories” used on its medicinal preparations. Although the appeals arose from separate proceedings, the Court first set out the factual background of the respondent’s claim to exclusive use of the mark. The respondent was a firm conducting business at Ernakulam under the same name and style as the contested trade mark. The firm manufactured medicinal products and had been founded around 1926 by Dr Sarvothama Rao, who was now deceased. Initially the business operated under the name “Navaratna Pharmacy,” but in January 1945 the name was changed to “Navaratna Pharmaceutical Laboratories.” From the outset the proprietors used the trade mark “Navaratna” on the products they produced and sold. In December 1928 the word “Navaratna” and the name “Navaratna Pharmacy,” indicating the respondent’s products, were registered by a declaration of ownership before the Registrar of Assurances in Calcutta. When the Cochin State enacted legislation similar to the Indian Trade Marks Act, 1940 (Cochin Trade Marks Act 19 of 1199 (1944)), the respondent‑firm registered the word “Navarama” as a trade mark for its medicinal preparations on 31 January 1947 and subsequently registered the mark consisting of the words “Navaratna Pharmaceutical Laboratories” for the same products on 17 February 1948. Evidence showed that the respondent‑firm’s business expanded over time, and it continued to sell its products under the registered trade mark and related names.

The Trade Marks (Amendment) Act, 1946 (Act 12 of 1946) added section 82‑A to the Trade Marks Act of 1940, thereby authorising the Central Government to conclude reciprocal arrangements with Indian States for the mutual recognition of trade marks registered in the other territory. A comparable provision existed in section 78‑A of the Cochin Trade Marks Act, and the respondent‑firm relied on this provision to apply for registration of the words “Navaratna Pharmaceutical Laboratories” in the Trade Marks Registry at Bombay. The application was duly advertised, no opposition was filed, and consequently the trade mark was entered on the register.

The appellant had been engaged for several years in the manufacture of Ayurvedic pharmaceutical products at Jullundur city in East Punjab, operating under the name “Navaratna Kalpa Pharmacy” and selling medicines labelled “Navaratna Kalpa”. In October 1946 the appellant sought registration of the words “Navaratna Kalpa” as a trade mark for his medicinal preparations, and the application was advertised in April 1950. The respondent‑firm opposed the application on the ground that the term “Navaratna” was descriptive, lacked distinctiveness, and therefore could not be registered; the opposition succeeded and the registration was refused. This refusal gave rise to the litigation that now forms the basis of the present appeals.

Initially, the appellant approached the Registrar of Trade Marks requesting that the respondent’s marks “Navaratna” and “Navarama” be removed from the register. While this request was pending, the respondent instituted suit No. 233 of 1951 before the District Judge, Anjikaimal, seeking a permanent injunction against the appellant for advertising, selling or offering for sale any preparation bearing the word “Navaratna” or any similar term. Because the validity of the respondent’s registration was directly implicated in that suit, the Registrar declined the appellant’s request and directed the appellant to approach the High Court having jurisdiction over the district court for rectification of the register by deleting the respondent’s mark.

Accordingly, the appellant filed Original Petition No. 19 of 1952 in the High Court of Travancore‑Cochin, praying that the registration of the word “Navaratna”, either alone or as part of other marks, be removed from the register as a trade mark for the respondent’s goods. Civil Appeal 523 of 1962 arose from the High Court’s order on that petition. The original petition remained pending in the High Court and was heard together with the appeal against the decree of the District Judge.

The decree issued by the District Judge in Original Suit No 233 of 1951 was examined. That original suit, as previously noted, sought a perpetual injunction against the appellant for using the word “Navaratna.” The plaintiff, who was the respondent before this Court, claimed to be the proprietor of two registered trade‑marks, namely “Navaratna” and “Navaratna Pharmaceutical Laboratories.” The plaintiff asserted that it possessed an exclusive right to use those marks in connection with its medicinal preparations and that this exclusive right was violated by the defendant, who was the appellant in the present proceedings, by advertising its goods under the name “Navaratna Kalpa” and by describing the trade origin of those goods as “Navaratna Kalpa Pharmacy.” In addition, the plaintiff alleged that the defendant, by using those marks, was passing off its goods as those of the plaintiff. In its written statement, the defendant raised three principal points. First, it contended that the word “Navaratna,” in its etymological sense, referred to a class of Ayurvedic preparations of a particular composition and that the term had been widely adopted by many firms and organisations to describe their own preparations. Consequently, the defendant argued that the plaintiff could not claim an exclusive title to the use of a word that was a common descriptor for such products, and therefore the word could not function as a trade‑mark conferring exclusivity. Second, with respect to the trade‑mark “Navaratna Pharmaceutical Laboratories,” which was the name under which the plaintiff actually carried on its business, the defence submitted that the essential element of that mark was the expression “Navaratna.” If the plaintiff were not entitled to the exclusive use of “Navaratna” for its products, then the combination of that word with the ordinary English words “Pharmaceutical” and “Laboratories,” which merely describe the place where medicines are prepared, could not render the overall mark registrable. For this reason, the defence argued that no relief could be claimed under section 21 of the Trade Marks Act, 1940. Third, the defendant submitted that even assuming the plaintiff were entitled to use the word “Navaratna” either alone or in the combination “Navaratna Pharmaceutical Laboratories,” the defendant’s use of the marks “Navaratna Kalpa” and “Navaratna Kalpa Pharmacy” was neither identical to nor deceptively similar to the plaintiff’s marks, and therefore the defendant could not be held liable for infringement. Regarding the plaintiff’s passing‑off claim, the defendant emphasized the packaging, the overall get‑up, and the manner in which the trade origin was clearly displayed on the packages of its preparations, arguing that these factors negated any possibility of passing off. Based on the pleadings and the contentions just described, the learned District Judge identified the issues and made findings. Firstly, he observed that, when considering the method of packing adopted and the other related features, …

The Court recorded that, based on the packaging and overall presentation on which the defence had relied, the defendant was not guilty of passing off. The Court also observed that the term “Navaratna” was a common word in Ayurvedic terminology, and therefore the plaintiff could not claim an exclusive right to use that word merely because he had employed it for his products over a number of years. To reach this conclusion, the learned District Judge noted that several Ayurvedic manufacturers and vendors had, for a very long time, used marks that incorporated the word “Navaratna,” either by itself or together with other words, to describe their products. Consequently, the plaintiff’s claim for relief on the ground of infringement of the mark “Navaratna” was disallowed. Turning next to the question of whether the mark “Navaratna Pharmaceutical Laboratories” could be validly registered and whether rights could be claimed on that registration, the learned Judge answered affirmatively. He pointed out that no evidence had been presented to show that any other person, firm, or concern had used that name, and that uncontradicted evidence showed that the trade name “Navaratna Pharmaceutical Laboratories,” or a variant thereof, had been used by the plaintiff for a very long time as a trademark that in the market denoted exclusively the plaintiff’s goods. The learned District Judge further held that the mark “Navaratna Pharmaceutical Laboratories,” or its permissible variants, had been used well before 25 February 1937 and had acquired factual distinctiveness, making it registrable under the proviso to section 6(3) of the Act. Accordingly, the plaintiff was granted a decree for an injunction limited to the trademark “Navaratna Pharmaceutical Laboratories.” Following this judgment, the appellant filed an appeal to the High Court, and the learned judges heard the appeal together with the original petition filed under section 46 of the Act by the appellant. By a common judgment, the learned judges confirmed all the findings and the decree of the learned District Judge and issued an order in the original petition that conformed to that decision. These two appeals were preferred by the appellant after obtaining special leave from this Court in each matter. The appellant’s counsel argued that the High Court’s finding that the respondent’s claim to the trademark “Navaratna Pharmaceutical Laboratories” was validly registered was inconsistent with the earlier finding that the word “Navaratna,” which formed the essential part of that trademark, was a descriptive term for which the respondent could obtain no exclusive right regardless of the extent of his use. He further submitted that if this reasoning were correct, the addition of the words “Pharmaceutical” and “Laboratories,” which are common English words of ordinary use to designate the place where pharmaceutical products are manufactured, could not confer distinctiveness or exclusive rights either.

The counsel contended that, according to section 6 of the Trade Marks Act and even apart from that provision, the words “Pharmaceutical” and “Laboratories” could not acquire distinctiveness merely through use. Consequently, the counsel submitted that the plaintiff did not possess an exclusive right to use the mark as a registered trade mark and that the claim for a perpetual injunction under section 21 of the Trade Marks Act could therefore not be sustained. To support this argument, the counsel relied on the provisions of section 6 of the Trade Marks Act, 1940, which set out the positive qualifications required for the registrability of a trade mark at the relevant date. The section reads as follows: “6.(1) A trade mark shall not be registered unless it contains or consists of at least one of the following essential particulars namely: (a) the name of a company, individual or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) one or more invented words; (d) one or more words having no direct reference to the character or quality of the goods, and not being, according to its ordinary significance, a geographical name or surname or the name of a sect, caste or tribe in India; (e) any other distinctive mark, provided that a name, signature, or any word, other than such as fall within the description in the above clauses, shall not be registerable except upon evidence of its distinctiveness. (2) For the purposes of this section, the expression ‘distinctive’ means adapted, in relation to the goods in respect of which a trade mark is proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration. (3) In determining whether a trade mark is adapted to distinguish as aforesaid, the tribunal may have regard to the extent to which (a) the trade mark is inherently so adapted to distinguish, and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish: Provided that in the case of a trade mark which has been continuously used (either by the applicant for the registration or by some predecessor in his business, and either in its original form or with additions or alterations not substantially affecting its identity) in relation to which registration is applied for, during a period from a date prior to the 25th day of February, 1937, to the date of application for registration, the Registrar shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid, and may accept evidence of acquired distinctiveness as entitling the trade mark to registration.” The counsel placed particular emphasis on clause (d) of sub‑section (1), arguing that this clause excluded words that directly referenced the character or quality of the goods from being considered distinctive and therefore from qualifying for registration.

In the provision under consideration, words that have a direct reference to the character or quality of the goods were excluded from being treated as distinctive, and therefore were not eligible for registration. The word “Navaratna” had been found to lack distinctiveness and to be incapable of acquiring it because it was merely the Sanskrit term used for a specific type of Ayurvedic preparation. Consequently, counsel argued that the terms “Pharmaceutical” and “Laboratories,” whether taken alone or combined with “Navaratna,” could not give the mark a distinctive character, given their ordinary descriptive meanings. He further submitted that, if the issue were decided solely on the basis of section 6(1) without reference to the proviso to sub‑section (3), the argument would be particularly strong. Counsel cited the observation of Pry L.J. in Dunn(1), noting the United Kingdom law reproduced in section 6 of the Indian Act, where the judge remarked that attempts such as Mr Eno’s use of the phrase “Fruit‑Salt” represented a perpetual struggle to claim private ownership over small portions of the common English language, an act the courts should consider a trespass. There was no dispute that the expressions “pharmaceutical” and “laboratories,” when used in connection with medicinal products, have a direct reference to the character of the goods. Lloyd‑Jacob J., speaking about the mark “Torq‑set” for screws, bolts, rivets, studs and fastening devices, observed that direct reference essentially means aptness for normal description. Applying this test, it could not be reasonably argued that the prohibition in section 6(1)(d) applied to the present mark. In the case at hand, the words “Pharmaceutical” and “Laboratories” directly described the character of the goods, since the trademarks in question were applied to medicinal or pharmaceutical products. Counsel also referred to a House of Lords decision highlighted by Mr Agarwala concerning Yorkshire Copper Works Limited’s application for the trade mark “Yorkshire.” The appeal, reported in Yorkshire Copper Works Ltd. v. Registrar of Trade Marks(4), drew on authorities such as 6 R.P.C. 379 at 386, the matter of American Screw Co.’s application [1959] R.P.C. 344 at 346, and earlier reports (1954) 71 R.P.C. 150, (1952) 69 R.P.C. 207, (1953) 70 R.P.C. 1. The Court of Appeal upheld the Divisional Court’s decision to reject the registrar’s refusal to register the mark “Yorkshire” for “solid drawn tubes and capillary fittings all made of copper or non‑ferrous copper alloys,” the refusal being grounded on the mark’s geographical character.

In the case that was decided under a provision of the United Kingdom Trade Marks Act of 1938, which corresponds exactly to section 6(1)(d) of the Act, the applicants presented evidence to show that all persons involved in the trade of copper tubes recognised the term “Yorkshire Tubes” as indicating the applicant’s products. On that basis they argued that the word “Yorkshire” had lost its original geographical meaning and had become wholly distinctive of the applicant’s goods. When the appeal was dismissed, Lord Simonds, the Lord Chancellor, said that he accepted the repeated statement of the counsel for the applicants that the mark had acquired full distinctiveness. Nevertheless, the Registrar had refused registration, a decision that was upheld by Lloyd‑Jacob, J., and by the unanimous opinion of the Court of Appeal.

The Lord Chancellor then expressed a strong disagreement with the contention advanced by counsel for the appellants that factual distinctiveness alone, especially when claimed to be total, should be decisive. He held that earlier decisions of this House in the W. & G. case and the Glastonbury case undermined that proposition, and he accepted the clear summary of those cases given by the Master of the Rolls in the present matter. The Master of the Rolls had observed, and the Lord Chancellor concurred, that the Court of Appeal, in the Liverpool Cable case, had correctly interpreted Lord Parker’s opinion in the W. & G. case, and that the House of Lords, in the Glastonbury case, affirmed that interpretation. Accepting that legal view, the Lord Chancellor could not see how the Registrar could reach a different conclusion. He noted that even if distinctiveness in fact was found, the Registrar still had to consider the other element of inherent adaptability. The word “Yorkshire,” being a geographical name, was not inherently adaptable to distinguish the applicant’s goods. He declined to define “inherent adaptability,” but explained that a term that describes a manufacturer’s goods well is often also suitable to describe the similar goods of another manufacturer, making it less capable of distinguishing one from the other. Consequently, a geographical name is prima facie excluded from registration. Just as a trader cannot claim exclusive rights to a laudatory or descriptive term, he likewise cannot claim exclusive rights to a territory—whether a country, county, or town—especially when that territory may later become a place of manufacture for similar goods. The Lord Chancellor did acknowledge, however, that when the geographical area is very small, there may be a possibility of attaining distinctiveness, but he did not explore that further in this judgment.

The Court observed that the issue of inherent incapability to acquire distinctiveness was not pursued in detail because it was not required for the matter before it. The Court agreed with the learned counsel that, had the respondent’s right to register his mark been examined solely under the language of section 6(1), the appellants’ argument that the respondent’s mark was non‑registrable would have carried considerable weight. However, the Court noted that this narrow approach did not apply in the present case. The learned District Judge, after considering the evidence on record, had found that the trade name “Navaratna Pharmaceutical Laboratories” had, through its use, acquired distinctiveness whereby it indicated the respondent and the respondent alone as the source of the goods bearing that mark. This factual finding was subsequently affirmed by the learned judges of the High Court. Moreover, the District Judge held that the respondent had been using that mark, or a permissible variant of it, long before the statutory cut‑off date of 25 February 1937. Consequently, even if the mark did not satisfy the literal requirements of section 6(1) as interpreted in subsections (2) and (3), it was still registrable as a trademark by operation of the proviso to section 6(3) of the Act. The Court found no error in the District Judge’s reasoning. It emphasized that the proprietor’s intention in using the mark was to signify the origin of the goods, and that there was clear evidence that a substantial portion of the public who purchased or consumed the goods recognized the mark as indicating source. Thus, by reputation the mark had come to denote the respondent’s goods, and although the words were not merely laudatory but descriptive—hence prima facie lacking distinctiveness—the long period of use had rendered the mark exclusively associated with the respondent’s products in the market. While the High Court judges did not elaborate on this point, they nonetheless affirmed, in general terms, the District Judge’s conclusions. Because there were concurrent factual findings that the respondent’s mark had acquired distinctiveness and because the legal criteria applied to reach those findings were correct, the appellant could not successfully challenge the correctness of that finding, and indeed the appellant’s counsel did not attempt to do so. The appellant’s counsel, however, contended that a proper construction of the proviso to section 6(3) would preclude marks that are inherently incapable of acquiring distinctiveness from registration, even if they were descriptive of the goods. This contention led the Court to consider the proper interpretation of the proviso.

In the present appeal, counsel for the petitioner argued that marks whose very nature renders them inherently incapable of acquiring distinctiveness cannot be permitted to register, and consequently the lower courts had erred in holding that the marks, although descriptive of the goods, were registrable. The discussion then turned to the proper interpretation of the proviso to section 6(3) of the Trade Marks Act. On close examination, the counsel’s arguments reduced to the claim that the proviso did not introduce any distinctiveness test that differed from the test already provided by section 6(1) as explained in subsection (2) and the main part of subsection (3). In other words, the submission was that if a mark fell within the prohibition of clause (d) of subsection (1), it could not rely on acquired distinctiveness through long use as an “old mark,” that is, a mark in use before 25 February 1937. To support this view, the counsel relied on the observations of Mr S Venkateswaran in his comments on section 6(3) found on pages 152‑154 of his 1940 Treatise on the Trade Mark Act, contending that those observations had received judicial endorsement in a Calcutta High Court decision reported as In the matter of India Electric Works Ltd. (49 C.W.N. 425). Before proceeding further, it is necessary to note that there is also a decision of the Allahabad High Court in Ram Rekhpal v. Amrit Dhara Pharmacy, in which the construction of the proviso was considered. The judges in that case, without discussing the issues involved, expressed the opinion that even if a mark fell within the prohibition of clause (d) of subsection (1) of section 6, an old mark—meaning a mark in use before 25 February 1937—would qualify for registration provided there was evidence of factual distinctiveness. The learned district judge in the present case referred to and relied upon that decision, but because the judgment contained no reasoning, it may be set aside for the purposes of this analysis. The core of the counsel’s submission regarding the construction of the proviso was based on the comment from Mr Venkateswaran’s treatise, which the counsel adopted as part of his argument. According to that comment, the primary condition for invoking the proviso is that the trade mark must have been continuously used in relation to the same goods for which registration is now sought, from a period prior to 25 February 1937. It is true that in the present matter the mark used before that date was “Navaratna Pharmacy,” whereas the mark now entered on the register, whose validity is being contested, is “Navaratna Pharmaceutical Laboratories.” However, the wording in the proviso, placed within brackets, provides that marks “either in their original form or with additions or alterations not substantially affecting its identity” are eligible for the special privileges accorded to old marks. This point was not contested before the lower courts or before this Court, and the parties conceded that the present mark satisfies this test when compared with the earlier mark used prior to 25 February 1937.

In this case, the Court observed that the privileges accorded to old marks were at issue. It was not contested before the lower courts or before this Court that the mark presently under consideration satisfied the comparative test when measured against the mark that the respondent had been using prior to 25 February 1937. Having conceded that point, the sole question for adjudication became whether the final clause of the proviso, which permits the Registrar to accept evidence of acquired distinctiveness as a basis for registration even though “the trade mark is not adapted to distinguish as aforesaid,” could be applied to situations where the trade mark directly refers to the character or quality of the goods or otherwise fails to meet the qualification for registration prescribed in clause (d) of subsection (1). The entire dispute concerning this portion of the matter hinged on the interpretation of the phrases “adapted to distinguish as aforesaid” and “distinctiveness” that appear in the concluding part of the proviso. The parties did not dispute that, according to the wording of the proviso, when the Registrar—cited in A.I.R. 1957 All. 683—recorded a finding that the mark proposed for registration was “not adapted to distinguish as aforesaid,” meaning that the mark did not satisfy the requirements set out in the main portion of subsection (3), the Registrar was nonetheless empowered to allow evidence of “acquired distinctiveness” and to register the mark if such evidence convinced him. Nevertheless, it was urged that the term “distinctiveness” within the expression “acquired distinctiveness” must be understood in the sense given in subsection (2), where it is defined to mean essentially “adapted to distinguish,” a definition whose content and import are further explained in subsection (3). The argument advanced was that, at the stage of considering evidence of acquired distinctiveness, the Registrar must revert to subsections (2) and (3); consequently, unless the tests of distinctiveness and of “adaptation to distinguish” articulated in those subsections are satisfied, no quantity of factual evidence of acquired distinctiveness presented to the Registrar would be sufficient to justify registration. In other words, the contention was that if a mark is prohibited from registration under section 6(1)(d), that prohibition, which cannot be removed by proof of acquired distinctiveness for new marks that fall outside the proviso, should likewise remain unaffected for old marks that have been continuously used as a trade mark since before 25 February 1937. The Court noted that accepting this line of reasoning would render the proviso ineffective, adding nothing to the statutory provision and failing to create any distinction in the law for old marks that have been in continuous use from the specified date. Moreover, such a construction would make the words “shall not refuse registration” meaningless when they are predicated solely on the fact that the trade mark is not “adapted to distinguish” as mentioned in the proviso. It was submitted that this interpretation would render the proviso otiose.

In this case, the Court observed that the opening words of sub‑section (2) created a difficulty because that provision defined the term “distinctive” for the purposes of the section and required that the proviso, being part of the same section, be read in accordance with that definition. The Court stated that it could not accept the construction advanced by counsel, nor could it read the opening words of sub‑section (2) as inevitably leading to the result suggested. It explained that sub‑section (2) defines “distinctive” as “adapted to distinguish” and that the explanatory language that follows might be read to exclude what is negated by section 6(1)(d). However, the Court noted that this definition does not resolve the difficulty raised by the wording of the proviso which says, “Shall not refuse registration by reason only of the fact that the trade mark is not adapted to distinguish as aforesaid.” The Court pointed out that the phrase “as aforesaid” requires reference first to sub‑section (3) and then back to sub‑section (2), and also inevitably links to the provision in section 6(1)(d) that deals with marks incapable of acquiring distinctiveness. Consequently, even when the proviso is read in any manner, the Court concluded that it is impossible to avoid the result that a mark which fails the “adapted to distinguish” test under section 6(1) could nevertheless be eligible for registration if it demonstrates acquired distinctiveness.

The Court further explained that it was unnecessary to undertake a detailed examination of the general nature of a proviso or its statutory function. It was sufficient to observe that it would be unreasonable to interpret any statute so that a proviso, which expressly creates an exception and intends to grant special rights to a particular class of cases, is rendered ineffective merely because the word “distinctiveness” used in the proviso is defined elsewhere. The Court rejected any construction that would place old marks and new marks on the same footing and subject them to identical registrability tests. In support of its view, the Court referred to section 20 of the Act, which provides: “(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark unless such trade mark has been continuously in use since before the 25th day of February, 1937, by such person or by a predecessor in title of his and unless an application for its registration, made within five years from the commencement of this Act, has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as”

The Court observed that the provision quoted from the Act stated that “the goods of another person or the remedies in respect thereof.” It was submitted that if every trade mark that had been used before 25 February 1937 automatically qualified for registration under the proviso to section 6(3), then the Registrar would never be in a position to refuse registration, and consequently the situation contemplated by section 20 of the Act could never arise. This argument was presented in support of a particular construction of the proviso, a construction that counsel for the appellants urged the Court to adopt. The Court found no merit in that line of reasoning. It noted that a mark could indeed have been used before the specified date yet fail to satisfy the proviso to section 6(3) because it had not acquired the degree of factual distinctiveness that the Registrar requires for registration. Therefore, even if the proviso were interpreted as the appellants suggested, there could still be instances where the Registrar would reject a mark that had been used prior to the cutoff date. The Court explained that this view reflected the true principle derived from the decision of McNair, J. in India Electric Works Ltd., which counsel had relied upon. In that case the Court was dealing with an appeal against the Registrar’s refusal to register an older mark, specifically the word “India” used for electric fans. The judge dismissed the appeal on the ground that “India” was a geographical term and thus excluded from registration under section 6(1)(d). The judge also examined whether the mark could qualify under the proviso and concluded that the applicant had not demonstrated the factual acquired distinctiveness necessary for registration. Consequently, the Registrar’s finding was upheld. The judge emphasized that mere use of a mark does not, by itself, prove acquired distinctiveness, a point that undermines the appellant’s submission on this issue. Although some broader observations were made, the judgment essentially accepted the Registrar’s determination that the applicant failed to establish the required factual distinctiveness. Accordingly, the case did not support counsel’s proposed construction of the proviso to section 6(3). The Court further noted that, as previously indicated, there were concurrent factual findings that the mark, having been used continuously since 1926, had become exclusively associated in the market with the respondent’s pharmaceutical products. Those findings were not open to challenge before this Court and had not been contested. From those facts, the Court concluded that the respondent’s mark had been correctly registered.

The Court observed that the proprietor of a registered trade mark was entitled to protect an infringement of his statutory right by obtaining a perpetual injunction against any persons who violated that right. The next portion of the learned counsel’s submission concerned the issue of whether the trade mark employed by the appellant, namely “Navaratna Pharmacy,” was so closely resembling the respondent’s trade mark that it was likely to deceive or cause confusion in the course of trade, as contemplated by section 21 of the Trade Marks Act. The Court noted that the two marks were not identical, and therefore the essential question was whether the appellant’s mark was deceptively similar to the respondent’s mark. The lower courts had also arrived at concurrent findings that the two marks were deceptively similar. The Court further held that there was little doubt that the expressions “Navaratna Pharmacy” and “Navaratna Pharmaceutical Laboratories” were similar in the sense described in section 21. The learned counsel advanced two principal arguments. First, he contended that the lower courts had held that the word “Navaratna” was a term commonly used in the trade of Ayurvedic preparations and that, consequently, the respondent could not claim exclusive rights to use that word in a trade mark. In that situation, counsel submitted that the lower courts should have either required the respondent to disavow exclusive rights to the word “Navaratna” within the mark “Navaratna Pharmaceutical Laboratories,” or should have ordered a disclaimer of that element as a condition for the mark to remain on the register under section 13 of the Act. Second, counsel argued that the finding of deceptive similarity by the lower courts conflicted with their separate finding that the packaging, label, get‑up and other presentation features of the appellant’s goods were not likely to cause confusion or deceive purchasers, a conclusion on which the claim for passing off had been dismissed. Regarding the first contention on disclaimer and the reference to section 13, the Court explained that an order of disclaimer could be issued only by the High Court when dealing with an application under section 46(2) of the Act. The appellant’s application contained no prayer for a disclaimer, and no submission was made to the High Court, either in the petition or the appeal, asking that the respondent be directed to disclaimer the word. Consequently, the Court found it inappropriate to allow the appellant to raise this argument at this stage. Concerning the allegation of inconsistency between the findings, the Court held that this objection rested on a misunderstanding of the fundamental differences between the causes of action and the reliefs available in a passing‑off suit and in a suit for infringement of a registered trade mark, and on an incorrect equating of the essential elements of a passing‑off action with those of a trade‑mark infringement action. The Court reiterated that these distinctions had already been explained.

The Court observed that the respondent’s suit alleged two distinct causes of action. First, it claimed an infringement of a statutory right conferred by section 21 of the Trade Marks Act with respect to a registered trade mark. Second, it alleged that the appellant had engaged in passing off by using the same mark in a manner that could mislead the public. The Court noted that the finding in favour of the appellant, which the learned counsel had highlighted, rested on several factual distinctions. These distinctions included the dissimilarity of the packaging in which the two parties marketed their goods, the difference in the physical appearance of the packets due to variations in colour and other visual features, and the overall general get‑up of the products. Moreover, the Court pointed out that the appellant’s packets prominently displayed the name and address of the appellant’s manufacturer. All of these factors were presented by the appellant to rebut the respondent’s allegation that the appellant had passed off his goods as those of the respondent.

The Court then explained that the matters described above are central to a cause of action for passing off, but they play a limited role in an action for infringement of a registered trade mark. In an infringement action, the registered proprietor relies on a statutory remedy that protects the exclusive right to use the mark in relation to the specified goods, as provided by section 21 of the Act. By contrast, a passing off action is a common‑law remedy that essentially addresses deceit, where one party misrepresents his own goods as those of another. The Court emphasized that the use of the plaintiff’s trade mark by the defendant is not a necessary element in a passing off claim, whereas it is the essential element – the sine qua non – in an infringement claim. The Court acknowledged that when the evidence of passing off consists merely of a colourable use of a registered trade mark, the essential features of both actions may coincide because a colourable imitation would constitute infringement as well. However, the Court clarified that this correspondence ends at that point. In an infringement case, the plaintiff must demonstrate that the defendant’s use of the mark is likely to deceive, and if the similarity between the two marks is so close—visually, phonetically, or otherwise—that the court concludes there is an imitation, no further evidence is required to establish a violation of the plaintiff’s statutory rights. In other words, once the plaintiff’s essential trade‑mark features are adopted by the defendant, the fact that the packaging, get‑up, or additional writings differ becomes irrelevant for infringement, although such differences may be material in a passing‑off action.

In assessing whether a defendant’s use of a mark infringes the plaintiff’s registered trade mark, the Court explained that any differences in the appearance of the goods themselves, such as the colour, shape, packaging, or any additional markings on the goods or on the packets in which the goods are offered for sale, are irrelevant if those differences merely indicate a distinct trade origin from that of the registered proprietor. By contrast, in a passing‑off action the defendant might avoid liability by demonstrating that the extra matter he has placed on his product is sufficient to distinguish his goods from those of the plaintiff. Once the Court is satisfied that the defendant has used the disputed mark “in the course of trade,” the question of infringement must be decided by a direct comparison of the plaintiff’s registered mark with the mark employed by the defendant. If the two marks are found to be identical, the Court held that no further enquiry is necessary because infringement is conclusively established. When the marks are not identical, the plaintiff bears the burden of proving that the defendant’s mark is so closely similar to the plaintiff’s registered trade mark that it is likely to deceive or cause confusion among consumers with respect to the goods for which the mark is registered, as prescribed in section 21. The Court noted that some authorities have questioned whether the phrase “or cause confusion” adds any element beyond the phrase “likely to deceive.” It was observed that this wording is merely an expansion of the earlier test and does not materially alter the underlying concept. Nevertheless, in an infringement suit the plaintiff must demonstrate that the defendant’s use of the mark, in the course of trade and in relation to the goods covered by the registration, is deceptively similar. This determination requires a side‑by‑side comparison of the two marks, and the degree of resemblance necessary to create deception cannot be fixed by any rigid, objective standard. The Court emphasized that the persons who may be deceived are the purchasers of the goods, and the likelihood of such deception is the core consideration. Resemblance may be phonetic, visual, or based on the overall idea conveyed by the plaintiff’s mark. The purpose of the comparison is to ascertain whether the essential features of the plaintiff’s trade mark are present in the defendant’s mark. Identifying those essential features is essentially a factual inquiry that depends on the Court’s judgment after evaluating the evidence concerning the use of the marks. Ultimately, the enquiry seeks to determine whether, taken as a whole, the defendant’s mark is deceptively similar to the plaintiff’s registered mark. The Court identified the respondent’s mark, alleged to have been infringed by the appellant, as “Navaratna Pharmaceutical Laboratories.”

In this case the respondent argued that the appellant’s mark, which the respondent described as a colourable imitation, was the word “Navaratna Pharmacy”. The respondent’s counsel again emphasized that the term “Navaratna” formed an essential part of the registered trademark and that it was a descriptive word commonly used in the trade. He submitted that if the word “Navaratna” were ignored in the appellant’s mark, there would be insufficient material left to hold that the appellant’s use was deceptively similar to the respondent’s registered mark. The Court observed, however, that this submission overlooked the earlier finding that the appellant could not claim a disclaimer of the word “Navaratna” against the respondent. Consequently, the appropriate mark for comparison must be the whole registered mark, including the word “Navaratna”. The Court further noted a principle expressed in another context that when common elements appear in the marks being compared, the marks must be examined as whole entities and the common parts cannot be disregarded. Applying that principle, the Court found no error in the lower courts’ conclusion that the appellant’s mark was deceptively similar to the respondent’s mark. The Court explained that the determination of deceptive similarity is a factual question, unless the test applied to decide it is itself flawed. In the present matter, no objection was raised that the lower courts erred in laying down the principles for comparison or in finding deceptive similarity, and the Court cited the authority of Lord Watson in Attorney‑General for the Dominion of Canada v. Attorney‑General for Ontario to support this view. Because the factual findings of the lower courts were concurrent, the Court declined to re‑examine the issue anew, finding the conclusion reasonable. The Court also addressed a later submission that the appellant was an honest concurrent user under section 10(2) of the Act, noting that this point had not been raised before any of the lower courts and therefore would not be considered for the first time at this stage. Accordingly, the Court dismissed the appeals, ordered that the costs be awarded, and required the payment of one set of hearing fees. The appeals were dismissed.