Amritdhara Pharmacy Vs. Satya Deo Gupta (AIR 1963 SC 449)
Satya Deo Gupta (hereinafter referred to as Respondents), in this case, had filed application for registration of the mark “Lakshmandhara” in 1950 under class 5 of fourth schedule of Trademark Rules, 1942. Averments were made that they were honest user of the mark since 1923 and that their products were sold not only in India but in foreign market as well. Amritdhara Pharmacy (hereinafter referred to as Appelant) objected the application on the grounds that they were user of the mark “Amritdhara” since 1901, the name “Amritdhara” has acquired commendable reputation throughout India and the composite word “Lakhmandhara” was used to denote the same medical preparation as that of “Amritdhara”. The registration of mark “Lakshmandhara” by respondent is likely to deceive and cause confusion and thus the registration of the mark should be refused. In response to this a counter affidavit was filed by the Respondents claiming that they were honest user of the mark and that their mark does not deceptively resembles with that of appellant’s mark. The Respondent further alleged that the single word ‘dhara’ had no particular significance in relation to the medicine, nor did that word mean or convey any special or exclusive meaning or effect in relation to the medicine.
Proceedings
Primarily there were two issues involved in this case which were disputed before Registrar of Trade Marks, High Court and Supreme Court which are:
- Whether the mark “Lakshmandhara” closely resembles with the mark “Amritdhara” and is likely to deceive public.
- Whether there was any acquiescence on behalf of Amritdhara Pharmacy for the use of mark “Lakshmandhara” as contended by the Respondents.
Before Registrar of Trade Marks
As to the first issue, on the basis of evidence produced before it, Registrar held that there is sufficient similarity between the mark of Appellant and mark of Respondent so as to deceive and cause confusion among public. Had it been only the matter of trademark infringement, Registrar would have no hesitation in allowing opposition.
As to the acquiescence registrar found in the favour of Respondent as the advertisement for both the marks were made through same media and it cannot be said that the Appellant did not had knowledge of use of mark by the Respondent. And on the basis of circumstances Registrar allowed for registration of the mark “Lakshmandhara” for sale in the State of Uttar Pradesh only.
On such decision of Registrar two appeal were sought by Appellant and Respondent respectively before High Court.
Before Allahabad High Court
As to the honest concurrent use, the Court held in the favour of Respondent, but on the issue of acquiescence they held in favour of Appellant. They observed that from the fact that both the medicines were being advertised in the same journals or periodicals it did not follow that the attention of the appellant was drawn to the use of the word ‘Lakshmandhara’ by the respondent. Hon’ble High Court allowed for registration of mark “Lakshmandhara” throughout India and observed that:
“There is no possibility of any Indian confusing the two ideas. Even phonetical differences are wide enough not to confuse anybody. The claim of the Amritdhara pharmacy that both the words ‘Amrit and dhara’ have become so associated with their goods that the use of each part separately or in any combination is likely to mislead is an untenable claim. The whole phrase ‘Amritdhara’ had been registered and the monopoly has to be confined only to the use of the whole word. The words of common language like ‘Amrit’ and ‘dhara’ cannot be made the monopoly of any individual. We, therefore, see no reason to disallow registration of the trademark “Lakshmandhara”.”
Before Supreme Court
Hon’ble Supreme Court devised the test of imperfect recollection and overall impression in the appeal filed before them. As to the issue of similarity the court framed two questions i.e., (1) who the persons are whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. The Court observed that the medical preparation in question is likely to be purchased by people with or without doctor’s prescription and an ordinary unwary consumer having imperfect recollection would not split the terms or even look for the etymological meaning of the two marks as observed by High Court, he would go for the overall structure and similarity. The court observed:
“A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name.”
And thus, the Court held that their exists overall similarity between two Trade Marks and High Court was erred in their observation.
On the question of acquiescence, the Hon’ble Supreme Court agreed with the observation and decision of the Registrar and thus upheld the decision of Registrar.
By Dhruv Dangayach
Contact us at info@origiin.com to avail services in Patent, Trademark, Contracts, Patent Licensing, M&A
Subscribe to our YouTube Channel HERE
Email: info@origiin.com
Whatsapp: +91 7483806607
