LexF. HOFFMANN-LA ROCHE & CO. LTD. versus GEOFFREY MANNERS & CO. PVT. LTD.
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A B c D E F G 213 F. HOFFMANN-LA ROCHE & CO. LTD. v. GEOFFREY MANNERS & CO. PVT. LTD. September 8, 1969 [J. C. SHAH AND V. RAMASWAMI, JJ.] The Trade and Merchandise Act, 1958, ss. 12(1) and 9(1)-Vitamin preparations-'DROPOVIT" whether a trade mark deceptively similar to 'PROTOVIT' so as to o/jened s. 12(1)-'DROPOVIT' whether a descriptive word or an invented word for the purpose of s. 9(1)-Tests. In. 1~46 the trade mark 'PROTOVIT' was registered for one of the vitamin preparations manufactu'red by the appellant company. In 1957 the respondent company applied for registration of its mark 'DROPOVIT' in respect of "medical and pharmaceutical preparations and substances". The application was granted. When the appellant came to know about this trade mark it asked the respondent to alter it. On the 'respondent's refusal to do so, the appellant in 1959, applied to the Registrar for recti- fication of the Register of Trade Marks by removal thereform of the respondent's trade mark. Later the appellant amended its application by adding the ground that 'DROPOVIT' was not an invented word. The Joint Registrar by letter dated August 5, 1961 rejected the appellant'• application for rectification. The appellant went in appeal to the Bomhay High Court. During the hearing of the appeal the respondent restricted the designation of goods covered by the mark 'DROP0V!T' to "medical preparations and, substances containing principally vitamins." The Single Judge as well as the Division Bench decided in favour of the respondent. The appellant came to this Court with certificate. The questions that fell for consideration were : (i) whether the word 'DROPOVIT' was deceptively similar to the word 'PROTOVIT' and thus offended the provision of s. 12(1) of the Trade and Merchandise Act, 1958: (ii) whether the word 'DROPOVIT' was an invented or a descriptive word for the purpose of s. 9 (1) of the Act. HELD : The appeal must be dismissed. (i) In order that a trade mark may be found de<-eptively similar to another it is not necessary that it ·should be intended to deceive or intended to cause confusion. ' It is its Probable effect on the ordinary kind of customers that one has to consider. For this purpose it is necessary to aoply both the visual and phonetic tests. It is .also important that the marks should be compared_ as wholes. It is not right to take a portion of the word and say that beoause that portion of the word differs from the corresponding portion of the word in the other. case ther~ is no suffi· cient similarity to cause confusion. The true test is whether the totality of the trilde mark is such that it is likely to cause dec·eption or confusion or mis.take in the minds of the persons accustomed to the existing trade mark. [216 H; 217 G-H; 218 El Parker Knoll Ltd. v. Knoll International Ltd., [1%2] R.P.C. 265 at 174 Pianoti•t Co. Ltd.'s application 23 R.P.C. 774, 777, Aristcc Ltd. v. Rysta Ltd., 62 R.P.C. 65 at 72 and Tok/on Ltd. v. Davidson & Co., 32 H R.P.C. 133 at 136. applied. The telrminal syllable 'VIT' in the two marks 'DROPOVIT' and 'PROTOVIT' was both descriotive an~, as the evidence showed. c.ommon to the trade. If greater' regard was paid to the uncommon eio:nent in L2Sup Cl/70-2 214 SUPREME COURT REPORTS (1970] 2 S.C.R the two words it was difficult to hold that one would be mistaken for or contused with the other. The letters ·D' and ·p• in DROPOVIT' and the corresponding letters 'P' and 'T' in 'PROTOVIT' could not possibly be slurred over in prOnunciation and the words were so dissimilar that there was no reasonable probability of confusion berween the words either from the. visual or phonetic point of view. This was all the more so because the preparafr.Jns from their very nature were lik..::ly to be pur- chased on the prescription of doctors, and under r. 61(2) of Drug Rules, 1945 could be sold only by licensed dealers so that the possibility of con- fusion would be reduced to a considerable extent. [219 A---C, E] (ii) It could not be accepted that the word 'DROPOVIT' would strike an ordinary person knowing English as meaning 'DROP OF VITAMINS'. The appellant's original application for rectification did not contain the ground that the word 'DROPOVIT was descriptive. It was therefore reasonable to presume that it did not strike even the le.gal advisers of the appellant as descriptive. It was true that the. w0rd 'DRO¥
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