KAVIRAJ PANDIT DURGA DUTT SHARMA versus NAVARATNA PHARMACEUTICAL LABORATORIES

Citation: [1965] 1 S.C.R. 737 · Decided: 20-10-1964 · Supreme Court of India · Bench: P.B. GAJENDRAGADKAR · Disposal: Dismissed

Cited by 2 judgment(s) · see the full citation network in Lexace

Judgment (excerpt)

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737 
KAVIRAJ PANDIT DURGA DUIT SHARMA 
v. 
NAV ARATNA PHAR.. .. IACEUTICAL LABORATORIES 
October 20, 1964 
(P.'B. GAJENDRAGADKAR, C.J., J. c. SHAH AND 
N. RAJAGOPALA AYYANGAR JJ.) 
' 
Trade Morb Act (5 'of 1940), s. 6-Provisa-Scope of-Action for 
infringement of trade mark> and action for passing off of good:.-Difference 
in factf!TS to be considered. 
The respondent, a firm manufacturing medicinal products, was the 
proprietor of two registered trade marks .. Na'\'1!'atna" and "'Navaratna 
Pharmaceutical Laboratories" from a period prior to 25th February 1937 •. · 
When the appellant, who was also a manufacturer of medicinal preparatiom, 
wught the regi•tration of the words "Navaratna Pharmacy" as his trade 
mark the r°'pondent objected successfully. The appellant -then moved the 
Registrar of Trade Marn for removing from the register, the trade mark 
·~avaratna" and for deleting the word .. Navaratna" from the other trade 
mark of ohe respondent. The Registrar directed him to move the High 
Conrt for the rectification, as the respondent had by that time filed a suit 
in the District C.owt for a permanent injunction restraining the appellant 
from selling any preparation under a mark containing the word "Navaratna". 
The appellant aceordingly filed an original petition in the High Court. The 
suit in the District Court was decreed in favour of the respondent with res-
. pect to the . trade mark ,"Navaratna Pharmaceutical Laboratories.'' An 
appeal against the decree filed by the appellant, and his Original Petition 
were beard together by the High' Court . and the decree of the District 
Conrt in favour of the respondent was confirmed. It was held that : (i) 
having regard to the method of packing adopted by the appel!ant, he WM 
not guilty of passing off, (ii) the respondent was not entitled to any relief 
on the ground of the infringement of the mark "Navaratna" as it wou a 
common word in Ayurvedic phraseology and used ·in connection with 
several medicinal preparations7 and (iii) the trade name "Navaratna Phar-
ma=itical Laboratories" had been used as a trade mark, by the respon· 
dent, for a very long time and had come to denote exclusively bis goods; 
and that the trade mark having been in use from before the specified date 
February 25, 1937 and having acquired factual distinctiveness, was regi•· 
terable under the proviro to s. 6(3) of the Trade Marks Act, 1940. In 
appeal to the Supreme Court it was contended that: (i) the decision of 
the High Court that the trade mark "Navaratna Pharmaceutical Labora-
tories" was validly registerahle was inconsistent with the finding · that 
G 
""Navaratnan which was tbe 
crucial word in the trade mark was only 
a. descriptive word in regard to v.rhich the respondent could obtain no exclu-
sive right, and (ii) the finding that the marks of-the aopellant and re•pOn· 
dent were deceptively similar was inconsistent with the finding that the 
packing in which the appellant's goods were marketed wa. not likely to 
cause confusion or deceive purchasers. 
· 
H 
HELD : (i) A mark which is not "adapted to distinguish" by the 
application of the tests laid down ins. 6(1) of the Act, could still qualify 
for registration by virtue of the provi•o to s. 6(3), by proof of acquired 
distinctiveness. Under the proviso, with respect to marks in use from a 
d2te prior to 25th February 1937, "the Registrar shall not refuse registra-
738 
SUPREME COURT REPORTS 
(1965] l S.C.R. 
lion by reason only of the fact that the trade mark is not adapted to dis-
tinguish as aforesaid, and may accept c'idence of acquired dis_tinc_liven.osa 
as enutling the trade mark to rcg1strat1on''. lbe v.·ord "d1st1nct1vcnrM" 
cannot mean "adapted LO dhitingu1sh" for then, the proviso \.\''OUld add 
nothing to the section and would n1akc no variation in the Jaw as between 
new marks and old marks which had been in use continuously from before 
the specified date. 
A constructicn ,.,.·hich v,:ould lead to old marks and 
new marks being placed on the same footing and being subjected to the 
same tests for registration cannot be accepted. 
l-lo\\.·c,•cr, a mark might 
have been used prior to the spedficd date, but it might not qualify for 
registration under the proviso by not having <!Cquired that degree of factual 
distinctiveness v.·hich the Registrar considers sufficient to enable it to qualify 
for registration. 
·1nereforc, v.·hen the Registrar records a finding that the 
mark submitted for regi

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