1969 (9) TMI 111 - SC - Indian Laws

Trademark appeal denied for 'DROPOVIT' as court rules it distinct from 'PROTOVIT' - emphasis on visual differences.

The court dismissed the appeal, ruling that 'DROPOVIT' was not deceptively similar to 'PROTOVIT' and was an invented word eligible for registration. The ... - Issues Involved:1. Deceptive similarity between the trademarks 'DROPOVIT' and 'PROTOVIT'.2. Whether 'DROPOVIT' is an invented word or descriptive.Detailed Analysis:1. Deceptive Similarity:The primary issue addressed was whether the trademark 'DROPOVIT' was deceptively similar to 'PROTOVIT' under Section 12(1) of the Trade and Merchandise Marks Act, 1958. The court evaluated whether the respondent's mark so nearly resembled the appellant's mark as to be 'likely to deceive or cause confusion.' It was emphasized that the probable effect on ordinary customers must be considered, not the intention to deceive.The court referenced the distinction between 'to deceive' and 'to cause confusion' as explained in Parker-Knoll Ltd. v. Knoll International Ltd., noting that confusion can occur without any false representation. The tests for comparing word marks, as formulated by Lord Parker in Pianotist Co., Ltd.'s application, were applied: examining the look and sound of the words, the goods they apply to, the nature of the customers, and all surrounding circumstances.The court acknowledged the visual and phonetic similarities between 'DROPOVIT' and 'PROTOVIT,' particularly the common suffix 'VIT,' which is a known abbreviation for vitamin preparations. However, it concluded that the uncommon elements in the words, particularly the differing consonants, made confusion unlikely. The presence of numerous other trademarks with the suffix 'VIT' further reduced the likelihood of confusion.It was also noted that vitamin preparations are typically sold by licensed dealers, which further diminishes the risk of confusion. The court ultimately agreed with the High Court and the Joint Registrar that there was no real tangible danger of confusion, and the application for rectification was dismissed.2. Invented Word or Descriptive:The second issue was whether 'DROPOVIT' was an invented word or merely descriptive. Section 9(1) of the Act requires a trade mark to contain at least one invented word or words with no direct reference to the character or quality of the goods.The appellant argued that 'DROPOVIT' was a combination of 'DROP OF VITAMIN,' suggesting it was descriptive. However, the court referred to the Diabolo case, where an invented word was defined as one that does not convey any obvious meaning to ordinary English speakers. The court found that 'DROPOVIT' did not immediately suggest 'DROP OF VITAMIN' to an ordinary person without explanation.The court also noted that the original application for rectification did not claim 'DROPOVIT' was descriptive, implying that even the appellant's legal advisers did not initially view it as such. The court agreed with the High Court's reasoning that 'DROPOVIT' was an invented word, as it did not remind an ordinary person of its component words without some thought or explanation.Conclusion:The appeal was dismissed, with the court holding that 'DROPOVIT' was not deceptively similar to 'PROTOVIT' and was an invented word entitled to registration. The application for rectification was therefore denied, and the respondent's trademark was allowed to remain on the Register. The judgment affirmed the decisions of the High Court and the Joint Registrar of Trade Marks.