MANU/SC/0197/1964

Equivalent/Neutral Citation: AIR1965SC 980, 1964 INSC 221, 1965KLJ690, [1965]1SC R737

IN THE SUPREME COURT OF INDIA

Civil Appeals No. 522 and 523 of 1962
Decided On: 20.10.1964
Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories
Hon'ble Judges/Coram:
P.B. Gajendragadkar, C.J., N. Rajagopala Ayyangar and J.C. Shah, JJ.
Case Note:
The case discussed the situation under which the action regarding the
infringement of the trade marks and passing off of goods could be taken
under Section 6 of the Trade Marks Act, 1940 - It was held that in an action
for infringement of a trade mark, the onus of proof would be on the plaintiff
when it was found that his trade mark was deceptively being used by the
defendant - So, where the similarity between the trade mark of the plaintiff
and defendant was found then, no further evidence would be required to
established that the rights of the plaintiff were violated - Also, the ground of
passing off of goods would play a limited role in an action for infringement of
a registered trade mark - Hence, in the instant case, the decision of the lower
courts in regard to the trade mark of the appellant being deceptive similar to
that of the respondent could not interfere with
JUDGMENT
N. Rajagopala Ayyangar, J.
1 . These two appeals, by special leave, are concerned with the validity of the
respondent-firm's claim as the registered proprietor of a Trade Mark 'Navaratna
Pharmaceutical Laboratories' used by it on its medicinal preparations.
2. The two appeals arise out of different proceedings but before narrating their history
it would be convenient to briefly set out the facts upon which the claim of the
respondent to the exclusive use of this Trade Mark is based. The respondent, as stated
already, is a firm, and it carries on business at Ernakulam in the same name and style
as the Trade Mark now in controversy - "Navaratna Pharmaceutical Laboratories". As its
name indicates, the firm manufactures medicinal products. The business of the firm was
founded sometime in 1926 by one Dr. Sarvothama Rao who is now no more. When
started, the business was called 'Navaratna Pharmacy' but from January, 1945 the name
of the business was changed to the present one - Navaratna Pharmaceutical
Laboratories. From the very beginning the proprietors used the Trade Mark "Navaratna"
on the products which they manufactured and sold. In December, 1928 the word
'Navaratna' and the name 'Navaratna Pharmacy' as connoting the products of the
respondent firm were registered by a declaration of ownership before the Registrar of
Assurances, Calcutta. When a legislation substantially similar to the Indian Trade Marks
Act, 1940 was enacted in the State of Cochin [Vide the Cochin Trade Marks Act 19 of
1199 (1944)] the respondent-firm registered the word 'Navaratna' as a Trade Mark in
respect of its medicinal preparations, on January 31, 1947 and another mark consisting

06-03-2025 (Page 1 of 13) www.manupatra.com NLSIU Bangalore

of the words 'Navaratna Pharmaceutical Laboratories' to denote the same products of
February 17, 1948. There is evidence that the respondent-firm has been having an
expanding business in the products which it manufactures and has been selling the
same under the above and other cognate names, and this has continued ever since.
3. The Trade Marks (Amendment) Act, 1946 (Act 12 of 1946) - inserted s. 82-A in the
Trade Marks Act of 1940 and under this provision the Central Government was
empowered to enter into reciprocal arrangements with Indian States for mutual
recognition of Trade Marks registered in the other territory. There was a similar
provision in s. 78-A of the Cochin Act and availing itself of this provision the
respondent-firm applied for the registration of the words 'Navaratna Pharmaceutical
Laboratories' in the Trade Marks Registry at Bombay. The application was advertised
and no opposition having been entered, the Trade Mark was registered.
4. Pausing here, certain facts have to be set out in relation to the appellant, since they
are material for understanding the origin of the proceedings which have given rise to
these appeals. The appellant has, for some years past, been carrying on business in the
preparation of Ayurvedic pharmaceutical products at Jullundur City in East Punjab under
the name of the "Navaratna Kalpa Pharmacy" and had been vending the medicines
prepared by him under the name "Navaratna Kalpa". While so, in October, 1946, he
applied for the registration of the words "Navaratna Kalpa" as a Trade Mark for his
medicinal preparations. This application was advertised in April, 1950, and the
respondent-firm opposed the application for registration on the ground that the word
"Navaratna" was descriptive and, having no distinctiveness, could not be registered.
This objection prevailed and the registration was refused. This led to the proceedings
which have culminated in these appeals.
5. In the first instance, the appellant moved the Registrar of Trade Marks for removing
from the register the trade mark "Navaratna" and the word "Navaratna" in the other
mark of the respondent. By this date, however, the respondent had filed suit No. 233 of
1951 (from which C.A. No. 522 of 1962 arises) before the District Judge, Anjikaimal, for
a permanent injunction restraining the appellant from advertising, selling or offering for
sale any preparations under a trade mark combining the word 'Navaratna' or any similar
word etc. By reason of the pendency of this proceeding in which the validity of the
registration of the respondent's mark was directly involved the Registrar refused his
application, and directed the appellant to move the High Court within whose jurisdiction
the District Court was situated for the rectification of the register by deleting the
respondent's mark. The appellant accordingly filed O.P. No. 19 of 1952 in the High
Court of Travancore-Cochin praying that the registration of the word "Navaratna" by
itself or as part of other marks as a trade mark for goods belonging to the respondent
be removed from the register. civil Appeal 523 of 1962 arises out of the order of the
High Court on this petition. This original petition No. 19 of 1952 was kept pending in
the High Court after it was ready for hearing and was heard along with the appeal
against the decree of the District Judge in Original Suit No. 233 of 1951.
6 . The Original Suit was, as stated earlier, for a perpetual injunction against the
appellant for using the word "Navaratna" and the cause of action for that suit was stated
to be that the plaintiff (respondent before us) being proprietor of the two registered
trade marks "Navaratna" and "Navaratna Pharmaceutical Laboratories" had an exclusive
right to the use of those marks for his medicinal preparations and that the said right
was infringed by the defendant (appellant before us) advertising his goods under the
name "Navaratna kalpa" with the trade origin of the goods being described as
"Navaratna Kalpa Pharmacy". There was also an allegation that by use of these marks
06-03-2025 (Page 2 of 13) www.manupatra.com NLSIU Bangalore
the defendant was passing off his goods as those of the plaintiff.
7. By his written statement the defendant raised principally three points :
1 . (a) .......... That the word "Navaratna" in its etymological sense meant
Ayurvedic preparations of a particular composition and that the word had been
generally adopted by several firms and organisations for designating their
preparations which they vended with that description. It was therefore
submitted that the plaintiff could claim no exclusive title to the use of that word
which was a common word for the description of the product as a trade mark to
designate is pharmaceutical preparations.
1 . (b) As regards the trade mark "Navaratna Pharmaceutical Laboratories"
which was in fact the name in which the plaintiff carried on its business, the
defence was that the crucial integer in that mark was the expression
"Navaratna" and that if the plaintiff was not entitled to the exclusive use of
word "Navaratna" to designate its products, the combination of the word with
the two other words "Pharmaceutical" and Laboratories" which were ordinary
English words descriptive of the place where medicines were prepared could
not render the trade mark a registerable one. For these two reasons the defence
was that no claim could be made to relief under s. 21 of the Trade Marks Act,
1940.
(2) Next it was submitted that even on the basis that the plaintiff was entitled
to the use of the word "Navaratna" either alone or in the combination
"Navaratna Pharmaceutical Laboratories", still the use of the trade mark by the
defendant of the words "Navaratna Kalpa" and "Navaratna Kalpa Pharmacy"
were not either identical with nor deceptively similar to the plaintiff's marks and
therefore he was not guilty of any infringement.
(3) As regards the claim for relief on the basis of passing off, the defendant laid
stress upon the packing, get-up and the manner in which the trade origin of the
goods was clearly brought out in the packages in which his preparations were
marketed and it was submitted that they clearly negatived any possibility of
passing off.
8. Appropriate issues were raised based on the pleadings and the contentions just now
indicated and the learned District Judge found : (1) that having regard to the method of
packing adopted and the other features of the get-up etc., on which the defence had
relied, the defendant was not guilty of passing off; (2) that the word "Navaratna" was a
common word in Ayurvedic phraseology and consequently the plaintiff could not claim
any exclusive title to the use of that word by reason of his having used it for his
products even though this had been for a number of years. To reach this finding the
learned District Judge pointed out that it was brought to his notice that there were
several concerns manufacturing and vending Ayurvedic preparations which had for a
very long time past either used marks which included that word and had described their
products by calling them "Navaratna" either alone or in combination with other words.
The right of the plaintiff to relief on the ground of the infringement of the mark
'Navaratna' was therefore disallowed. (3) Dealing next with the question as to whether
the mark "Navaratna Pharmaceutical Laboratories" could be validly registered and rights
claimed for such a registration, the learned Judge answered it in the affirmative pointing
out that no evidence was placed before the Court of the use by any other person, firm
or concern of that name and that there was evidence which was uncontradicted that that

06-03-2025 (Page 3 of 13) www.manupatra.com NLSIU Bangalore

trade name "Navaratna Pharmaceutical Laboratories" or some variant of the same had
been used as a trade mark by the plaintiff for a very long time had come in the market
to denote exclusively the goods of the plaintiff. The learned District Judge further held
the mark "Navaratna Pharmaceutical Laboratories" or its permissible variants had used
long before February 25, 1937 and having acquired factual distinctiveness, was
registerable under the proviso to s. 6(3) of the of the Act. The plaintiff was, therefore,
granted a decree for an injunction confined to the trade mark "Navaratna Pharmaceutical
Laboratories".
9. From this judgment the appellant filed an appeal to the High Court and the learned
Judges heard the appeal along with the Original Petition under s. 46 of the Act filed by
the appellant. By a common judgment the learned Judged confirmed all the findings and
the decree of the learned District Judge and made an order in the Original Petition
conformably to this decision. These two appeals have been preferred by the appellant
after obtaining special leave from this Court in these two matters respectively.
10. The first submission of Mr. Agarwala, learned Counsel for the appellant was that the
judgment of the High Court holding the respondent's claim to the trade mark "Navaratna
Pharmaceutical Laboratories" as a validly registered mark was really inconsistent with
their finding that "Navaratna" which was the crucial and important word in that trade
mark was a descriptive word in regard to which the respondent would obtain no
exclusive right by any amount of user. His further submission was that if he was right in
this, the addition of the words "Pharmaceutical" and "Laboratories" which were common
English words of ordinary use to designate the place where pharmaceutical products are
manufactured, were, on the terms of s. 6 of the Trade Marks Act and even otherwise,
incapable of acquiring distinctness by mere user. He, therefore submitted that the
plaintiff had on exclusive right to the use of the mark as a registered trade mark and
that consequently his claim for the relief of perpetual injunction under s. 21 of the
Trade Marks Act was not sustainable. For this purpose learned Counsel relied on the
provisions of s. 6 of the Trade Marks Act, 1940 which provided the positive
qualifications for registrability of trade mark on the relevant date. That section runs :
"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
signification, 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,
06-03-2025 (Page 4 of 13) www.manupatra.com NLSIU Bangalore
 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,
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 dare 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."
11. The learned Counsel particularly stressed clause (d) of sub-s. (1) which excluded
words having direct reference to the character or quality of the goods" from being
treated as distinctive, and thus qualifying for registrability. The word 'Navaratna' having
been held to be not distinctive and indeed incapable of becoming distinctive by reason
of its being merely the Sanskrit word for describing Ayurvedic preparations of a
particular composition, he submitted that the words 'Pharmaceutical' and ' Laboratories
could neither by themselves, nor in combination with it confer upon that word the
quality of distinctiveness having regard to their ordinary descriptive signification. If the
matter had to be decided in terms of s. 6(1) alone without reference to the terms of the
proviso to sub-s. (3) to which we shall advert presently, we see great force in the
submission of the learned Counsel.
1 2 . As Fry L.J. said in re : Dunn 6 R.P.C. 379 at 386 with reference to the
corresponding law in U.K. which has been reproduced by s. 6 of the Indian Act :
"It is said that the words 'Fruit-Salt' have never been used in collocation except
by Mr. Eno. Be it so ........ I cannot help regarding the attempt on Mr. Eno's
part as an instance of that perpetual struggle which it seems to me is going on
to enclose and to appropriate as private property certain little strips of the great
open common of the English language. That is a kind of trespass against which
I think the courts ought to set their faces."
13. There can be no dispute either that the words "Pharmaceutical Laboratories" used in
relation to medicinal preparations have "a direct reference to the character of the
goods". Speaking of the mark "Torq-set" in respect of screws bolts, rivets and studs and
fastening devices, Lloyd-Jacob J. observed : (In the matter of American Screw Co.'s
appln. 1959] R.P.C. 344
06-03-2025 (Page 5 of 13) www.manupatra.com NLSIU Bangalore
 "Direct reference corresponds in effect to aptness for normal description".
14. Judged by this test it could not be seriously contended that the prohibition in s.
6(1)(d) would be attracted to this mark. In the present case, the words 'Pharmaceutical'
and 'Laboratories' would have a direct reference to the character of the goods since the
trade marks to which it is claimed to attach them are medicinal or pharmaceutical
products. In this connection reference may also be made to a decision of the House of
Lords to which Mr. Agarwala drew our attention. Yorkshire Copper Works Limited's
Application for a Trade Mark. (1954) 71 R.P.C. 150 - Yorkshire Copper Works Ltd. V.
Registrar of Trade Marks (1952) 69 R.P.C. 207; 1953) 70 R.P.C. 1 was an appeal from
the Court of appeal affirming the decision of the Divisional Court which rejected an
appeal against on order of the Registrar refusing to register the Trade Mark "Yorkshire"
for "solid drawn tubes and capillary fittings all made of copper or non-ferrous copper
alloys". The refusal to register was on the ground of the word being geographical and
so being disqualified for registration under a provision of the U. K. Trade Marks Act of
1938 - identical in terms with s. 6(1)(d) of the Act. The applicants led evidence to
establish and claimed that they had established that everyone concerned in the trade in
copper tubes understood "Yorkshire Tubes" as meaning the products of the applicant. It
was therefore contended that the word 'Yorkshire' had lost its primary geographical
significance and had become 100% distinctive of the applicant's goods. In dismissing
the appeal Lord Simonds, Lord Chancellor observed :
"I am content to accept to accept the statement reiterated by their learned
Counsel that the mark had acquired 100 per cent distinctiveness. In spite of this
fact the Registrar refused registration and has been upheld in his refusal by
Lloyd-Jacob, J. and the unanimous opinion of the Court of Appeal ........ Here I
must express my emphatic dissent from the proposition which was strenuously
urged by Counsel for the Appellants that distinctiveness in fact is conclusive -
at any rate, if there is what he called 100 per cent distinctiveness. In my
opinion the decisions of this House in the W. & G. case and the Glastonbury
case are fatal to this proposition and I am content to accept as accurate the
clear exposition of those cases given by the learned Master of the Rolls in the
present case. He took the view which I share that the Court of Appeal had in the
Liverpool Cable case rightly interpreted the opinion of Lord Parker in the W. &
G. case and that this House, in its turn, in the Glastonbury case endorsed that
interpretation. Accepting that view of the law, which indeed, if the matter were
res integra, I should not hesitate to commend to your Lordships, I do not see
how the Registrar could have come to any other conclusion. Unless, having
found distinctiveness in fact, he needed to pay no regard to the other factor of
inherent adaptability, he was faced by the fact that there could not well be a
geographical name less "inherently adapted" than Yorkshire to distinguish the
goods of the Appellants. I do not propose to try to define this expression. But I
would say that, paradoxically perhaps, the more apt a word is to describe the
goods of a manufacturer, the less apt it is to distinguish them; for a word that
is apt to describe the goods of A, is likely to be apt to describe the similar
goods of B. It is, I think, for this very reason that a geographical name in prima
facie denied registrability. For, just as a manufacturer is not entitled to a
monopoly of a laudatory or descriptive epithet, so he is not to claim for his own
a territory, whether country, county or town, which may be in the future, if it is
not now, the seat of manufacture of goods similar to his own."
15. Of course, where the geographical area is very small there is a possibility of the
inherent incapability to attain distinctiveness becoming attenuated, but we do not go
06-03-2025 (Page 6 of 13) www.manupatra.com NLSIU Bangalore
into these details as they are unnecessary for our present purpose. The learned Counsel
is therefore right in his submission that if the right of the respondent to the registration
of his mark had to be considered solely on the terms of s. 6(1), the appellant's
submissions as regards the non-registrability of the respondent's mark would have great
force.
16. That, however, is not the position here. The learned District Judge has, on the basis
of evidence recorded a finding that the mark or trade name 'Navaratna Pharmaceutical
Laboratories' had by user acquired distinctiveness in the sense of indicating the
respondent and the respondent alone as the manufacturer of goods bearing that mark
and that finding has been affirmed by the learned Judges of the High Court. The learned
District Judge has further held that the respondent has been using that mark or a
permissible variant of that mark from long before the 25th February 1937, and that in
consequence, notwithstanding that the mark might not satisfy the requirements of s.
6(1) as explained by sub-ss. (2) & (3) of that section, still it was registerable as a
Trade Mark by virtue of the proviso to s. 6(3) of the Act. We do not find any error in the
approach of the learned District Judge to this question. In the first place, there was the
intention on the part of the proprietor of the mark to indicate by its use the origin of the
goods on which it was used. There was also indubitable evidence regarding the
recognition of that mark as indicating origin on the part of that section of the public
who buy these goods in the course of trade or for consumption. Thus the finding was
that by reputation the mark had come to denote the goods of the respondent. Besides,
the words were not a merely laudatory expression in relation to the goods, but
descriptive though as such they would prima facie not be distinctive. Length of user
would, of course, be a material factor for the mark to become distinctive and the
learned District Judge found that by such a long user the mark had become exclusively
associated with the goods of the respondent in the market.
17. Though the learned Judges of the High Court have not discussed this question in
their judgment, their judgment, they have affirmed in general terms the conclusions
recorded by the District Judge on this Point. There being concurrent findings on the
question as to whether the respondent's mark has acquired distinctiveness as a matter
of fact, and there being no error of law in the criteria applied for reaching them, it
would not be open to the appellant to challenge the correctness of that finding and,
indeed, learned Counsel for the appellant did not attempt to do so. What he, however,
submitted was that on a proper construction of the proviso to s. 6(3) of the Act marks
which from their very nature were inherently incapable of acquiring distinctiveness
could not qualify for registration and the Courts below therefore erred in holding the
marks which because of their being descriptive of the goods were inherently incapable
of registration, to be registrable.
18. This takes us to the consideration of the proper construction of the proviso. Closely
examined, the arguments of the learned Counsel on this matter boils down to this that
the proviso really did not introduce any standard of distinctiveness different from that
which had been provided by the terms of s. 6(1) as explained by sub-s. (2) and the
main part of sub-s. (3); in other words, the submission was that in cases where the
mark fell within the prohibition of clause (d) of sub-s. (1) it could not qualify for
registration on the basis of acquired distinctiveness by long user as an "old mark" i.e.,
from before February 25, 1937. In support of this submission the learned Counsel relied
on the view expressed by Mr. S. Venkateswaran in his comments on s. 6(3) at pages
152-154 of his Treatise on Trade Mark Act 1940 which view he submitted had found
judicial acceptance in a decision of the Calcutta High Court reported as In the matter of
India Electric Works Ltd. 49 C.W.N. 425
06-03-2025 (Page 7 of 13) www.manupatra.com NLSIU Bangalore
19. Before proceeding further we should add that there is a decision of the Allahabad
High Court in Ram Rekhpal v. Amrit Dhara Pharmacy MANU/UP/0188/1957 :
AIR1957All683 in which the question of the construction of the proviso came up for
consideration. The learned Judges, however, without any discussion of the points
involved, expressed their opinion that even if the mark came within the prohibition in
clause (d) of sub-s. (1) of s. 6, an old mark i.e., marks in use from before February 25,
1937 would qualify for registration if there was evidence of factual acquired
distinctiveness. This decision has been referred to and relied on by the learned District
Judge in the case before us; but as it does not contain any reasons for the decision, it
may be omitted from consideration.
20. The main part of the learned Counsel's submission as regards the construction of
the proviso was based on the comment in Mr. S. Venkateswaran's treatise which learned
Counsel adopted as part of his argument. The primary requisite for attracting the
proviso is that the trade mark must have been continuously used in relation to the same
goods as those in relation to which registration is applied for from a period prior to
February 25, 1937. It is true that in the present case the relevant mark as used before
February 25, 1937 was "Navaratna Pharmacy" and the mark now on the register the
validity of whose registration under the Trade Marks Act is in question is "Navaratna
Pharmaceutical Laboratories". But it would be noticed that by the words within the
brackets in the proviso marks "either in their original form or with additions or
alterations not substantially affecting its identity" qualify for the special privileges
accorded to old marks. It was not contended before the Courts below or before us that
the mark now in question did not satisfy this test when compared with that which the
respondent was using prior to February 25, 1937. This being conceded, the only
question for consideration is whether the last part of the proviso that the Registrar may
accept evidence of acquired distinctiveness as entitling a mark for registration
notwithstanding the fact that "the trade mark is not adapted to distinguish as aforesaid",
could apply to cases where the trade mark has a direct reference to the character or
quality of the goods or is otherwise not qualified for registration under clause (d) of
sub-s. (1). The entire argument on this part of the case is merely based on the use of
the expressions 'adapted to distinguish as aforesaid' and 'distinctiveness' in the
concluding portion of the proviso. It was not disputed that on the words of the proviso
when the Registrar recorded a finding that the mark submitted for registration was "not
adapted to distinguish as aforesaid", that is, that the mark did not fulfil the
requirements of the tests suggested by the main part of sub-s. (3), he was authorised
to permit to permit evidence being led as to "acquired distinctiveness" and to register
the mark, if the evidence satisfied him on this point. It was, however, urged that the
word 'distinctiveness' in the expression acquired distinctiveness" had to be understood
in the sense in which it is defined in sub-s. (2) where it is stated to mean practically
"adapted to distinguish", the content and the significance of which is elaborated in sub-
s. (3). The submission was that at that stage, when accepting evidence of acquired
distinctiveness one is again thrown back on sub-ss. (2) and (3), with the result that
unless the tests of distinctiveness and of "adaptation to distinguish" which are explained
in sub-ss. (2) and (3) are satisfied , no amount of evidence led before the Registrar of
factual acquired distinctiveness would suffice to permit registration. In other words, the
argument was that if a mark was one which was prohibited from being registered under
s. 6(1)(d), that ban which is not lifted by proof of acquired distinctiveness in the case
of new marks not falling within the proviso is not lifted either in the case of old marks
which had been in use continuously as a trade mark from before February 25, 1937. It
would be seen that if this argument were accepted, the proviso adds nothing to the
section and makes no variation in the law as regards old marks which had been in use
continuously from before the specified date. It would also make meaningless the words
06-03-2025 (Page 8 of 13) www.manupatra.com NLSIU Bangalore
'shall not refuse registration' by reason only of the fact that the trade mark is not
'adapted to distinguish' occurring in the proviso. It was said that this construction which
would render the proviso otiose and a futility was necessitated by the opening words of
sub-s. (2) where the definition of the expression "distinctive" was said to be "for the
purposes of this section and that the proviso to the sub-section being part of the
section, the words there had to be understood in the sense defined. We feel unable to
accept this construction, nor do we read the opening words of sub-s. (2) as necessarily
leading to this result. Briefly stated, "distinctive" is defined in sub-s. (2) as "adapted to
distinguish" and the latter phrase explained in language which might exclude what is
negatived by s. 6(1)(d). But that, however, does not solve the problem created by the
words of the proviso "Shall not refuse registration by reason only of the fact that the
trade mark is not adapted to distinguish as aforesaid". The use of the words "as
aforesaid" takes one back first to sub-s. (3) and than on to sub-s. (2) and necessarily
also to the provision in s. 6(1)(d) where marks which are incapable of acquiring
distinctiveness are dealt with. Hence even on the terms of the proviso, however
construed, it is not possible to escape the conclusion that a mark which is not "adapted
to distinguish" by the application of the tests laid down in s. 6(1) could still qualify for
registration by proof of acquired distinctiveness.
2 1 . For the present purpose it is unnecessary to enter into an examination of the
general nature of a proviso and of its function in statutes. It is sufficient to point out
that it would not be a reasonable construction of any statute to say that a proviso which
in terms purports to create an exception and seeks to confer certain special rights on a
particular class of cases included in it should be held to be otiose and to have achieved
nothing merely because of the word 'distinctiveness' used in it which has been defined
elsewhere. A construction which would lead to old marks and new marks being placed
on the same footing and being subjected to the same tests for registrability cannot, in
our opinion, be accepted.
22. In this connection, some support was sought for the construction pressed upon us
by the learned Counsel for the appellants by reference to s. 20 of the Act which reads :
"(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 goods of another person or the remedies in
respect thereof."
23. It was urged that if every mark which had been in use prior to February 25, 1937
qualified for registration under the proviso to s. 6(3), there could really be no cases
where the Registrar could refuse registration, with the result that the contingency
contemplated by s. 20 of the Act could never arise. This was stated to support the
construction of the proviso which learned Counsel commended for our acceptance. Here
again, we do not see any substance in this argument. A mark might have been used
even prior to February 25, 1937; but it might not qualify for registration under the
proviso to s. 6(3) by not having acquired that degree of factual distinctiveness which
the Registrar considers is sufficient to enable it to qualify for registration. It is therefore

06-03-2025 (Page 9 of 13) www.manupatra.com NLSIU Bangalore

possible to conceive of cases where even if the proviso to s. 6(3) were construed in the
manner in which we have indicated, there would still be scope for the rejection by the
Registrar of a trade mark in use prior to the specified date. That in our opinion, is the
true ratio of the decision of McNair, J. in India Electric Woks Ltd. 49 C.W.N. 42 on
which Mr. Agarwala relied in this connection.
2 4 . The Court was there concerned with an appeal from an order of the Registrar
refusing registration in respect of an old mark. The mark in question was the word
'India' as applied to electric fans. The learned Judge dismissed the appeal on the ground
that the word 'India' was a geographical word and therefore would not qualify for
registration being prohibited by s. 6(1)(d). The learned Judge also considered whether
the mark could qualify for registration under the proviso. The conclusion reached on
this part of the case was that the applicant had not established factual acquired
distinctiveness to qualify for registration, and that the Registrar was therefore right in
the finding that he recorded on this matter. Proof of user, the learned Judge held, was
not ipso jure proof of acquired distinctiveness and this is obviously right and does not
advance the appellant's submission in regard to this question. Though there are some
observations which might be wider, it substantially proceeded on accepting the finding
of the Registrar regarding the applicant having failed to establish factual acquired
distinctiveness for his mark. That case therefore does not assist the learned Counsel for
the construction that he seeks to put on the proviso to s. 6(3).
25. As we have pointed our earlier, there are concurrent findings of fact on this point
that through long user from 1926 onwards, the mark had become associated exclusively
in the market with the pharmaceutical products manufactured by the respondent. The
finding is not capable of being challenged before us and was not, in fact, attempted to
be challenged. From this it would follow that the respondent's mark was rightly
registered and that he was entitled to protect an invasion of his right by seeking a
perpetual injunction from persons who invaded those rights.
26. The next part of the learned Counsel's argument related to the question whether the
Trade Mark used by the appellant viz., 'Navaratna Pharmacy' so nearly resembled the
trade mark of the respondent as to be likely to deceive or cause confusion in the course
of trade" within s. 21 of the Act. The mark is not identical and so the question is
whether the appellant's mark is deceptively similar to the respondent's. On this matter
also, there are concurrent findings of the Courts below regarding the deceptive
similarity of the two marks. That the words 'Navaratna Pharmacy' and 'Navaratna
Pharmaceutical Laboratories' are similar in the sense spoken of by s. 21 does not appear
to us to be of much doubt. But the learned Counsel's submissions were two-fold : (1)
that the Courts below had found that the word 'Navaratna' was a word in common use
in the trade in Ayurvedic preparations and the courts rightly held the respondent could
not claim exclusive rights to the use of that word in the mark. In these circumstances,
Mr. Agarwala submitted that the Courts below should have insisted on either the
respondent disclaiming exclusive rights to the word 'Navaratna' in the trade mark
'Navaratna Pharmaceutical Laboratories' or that the disclaimer should have been ordered
as a condition of the trade mark remaining on the register under s. 13 of the Act., (2)
The finding by the Courts below that the marks were deceptively similar was directly
contrary to and inconsistent with their finding that the packing, label, get-up etc., in
which the appellant's goods were marketed was not likely to cause any confusion in the
market or deceive any purchasers, wary or otherwise on the basis of which the claim for
passing off was rejected.
27. As regards the first contention regarding disclaimer and the reference to s. 13, the
06-03-2025 (Page 10 of 13) www.manupatra.com NLSIU Bangalore
matter stands thus. Under the terms of s. 13 of the Act, an order directing disclaimer
could have been passed only by the High Court when dealing with the appellant's
application under s. 46(2) of the Act. The application that he filed contained no prayer
to direct a disclaimer, and no submission appears to have been made to the High Court
when dealing with the petition or even with the appeal that the respondent should be
directed to disclaim. In these circumstances, we do not consider it proper to permit the
appellant to urge this argument before us.
28. The other ground of objection that the findings are inconsistent really proceeds on
an error in appreciating the basic differences between the causes of action and right to
relief in suits for passing off and for infringement of a registered trade mark and in
equating the essentials of a passing off action with those in respect of an action
complaining of an infringement of a registered trade mark. We have already pointed out
that the suit by the respondent complained both of an invasion of a statutory right
under s. 21 in respect of a registered trade mark and also of a passing off by the use of
the same make. The finding in favour of the appellant to which the learned Counsel
drew our attention was based upon dissimilarity of the packing in which the goods of
the two parties were vended, the difference in the physical appearance of the two
packets by reason of the variation in their colour and other features and their general
get-up together with the circumstance that the name and address of the manufactory of
the appellant was prominently displayed on his packets and these features were all set
out for negativing the respondent's claim that the appellant had passed off his goods as
those of the respondent. These matters which are of the essence of the cause of action
for relief on the ground of passing off play but a limited role in an action for
infringement of a registered trade mark by the registered proprietor who has a statutory
right to that mark and who has a statutory remedy in the event of the use by another of
that mark or a colourable limitation thereof. While an action for passing off is a
Common Law remedy being in substance an action for deceit, that is, a passing off by a
person of his own goods as those of another, that is not the gist of an action for
infringement. The action for infringement is a statutory remedy conferred on the
registered proprietor of a registered trade mark for the vindication of the exclusive right
to the use of the trade mark in relation to those goods (Vide s. 21 of the Act). The use
by the defendant of the trade mark of the plaintiff is not essential in an action for
passing off, but is the sine qua non in the case of an action for infringement. No doubt,
where the evidence in respect of passing off consists merely of the colourable use of a
registered trade mark, the essential features of both the actions might coincide in the
sense that what would be a colourable limitation of a trade mark in a passing off action
would also be such in an action for infringement of the same trade mark. But there the
correspondence between the two ceases. In an action for infringement, the plaintiff
must, no doubt, make out that use of the defendant's mark is likely to deceive, but were
the similarity between the plaintiff's and the defendant's mark is so close either visually,
phonetically or otherwise and the court reaches the conclusion that there is an
limitation, no further evidence is required to establish that the plaintiff's rights are
violated. Expressed in another way, if the essential features of the trade mark of the
plaintiff have been adopted by the defendant, the fact that the get-up, packing and
other writing or marks on the goods or on the packets in which he offers his goods for
sale show marked differences, or indicate clearly a trade origin different from that of the
registered proprietor of the make would be immaterial; whereas in the case of passing
off, the defendant may escape liability if he can show that the added matter is sufficient
to distinguish his goods from those of the plaintiff.
29. When once the use by the defendant of the mark which is claimed to infringe the
plaintiff's mark is shown to be "in the course of trade", the question whether there has
06-03-2025 (Page 11 of 13) www.manupatra.com NLSIU Bangalore
been an infringement is to be decided by comparison of the two marks. Where the two
marks are identical no further questions arise; for then the infringement is made out.
When the two marks are not identical, the plaintiff would have to establish that the
mark used by the defendant so nearly resembles the plaintiff's registered trade mark as
is likely to deceive or cause confusion and in relation to goods in respect of which it is
registered (Vide s. 21). A point has sometimes been raised as to whether the words "or
cause confusion" introduce any element which is not already covered by the words
"likely to deceive" and it has sometimes been answered by saying that it is merely an
extension of the earlier test and does not add very materially to the concept indicated
by the earlier words "likely to deceive". But this apart, as the question arises in an
action for infringement the onus would be on the plaintiff to establish that the trade
mark used by the defendant in the course of trade in the goods in respect of which his
mark is registered, in deceptively similar. This has necessarily to be ascertained by a
comparison of the two marks-the degree of resemblance which is necessary to exit to
cause deception not being capable of definition by laying down objective standards. The
persons who would be deceived are, of course, the purchasers of the goods and it is the
likelihood of their being deceived that is the subject of consideration. The resemblance
may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The
purpose of the comparison is for determining whether the essential features of the
plaintiff's trade mark are to be found in that used by the defendant. The identification of
the essential features of the mark is in essence a question of fact and depends on the
judgment of the Court based on the evidence led before it as regards the usage of the
trade. It should, however, be borne in mind that the object of the enquiry in ultimate
analysis is whether the mark used by the defendant as a whole is deceptively similar to
that of the registered mark of the plaintiff.
30. The mark of the respondent which he claims has been infringed by the appellant is
the mark 'Navaratna Pharmaceutical Laboratories', and the mark of the appellant which
the respondent claimed was a colourable limitation of that mark is 'Navaratna
Pharmacy'. Mr. Agarwala here again stressed the fact that the 'Navaratna' which
constituted an essential part of feature of the Registered Trade Mark was a descriptive
word in common use and that if the use of this word in the appellant's mark were
disregarded, there would not be enough material left for holding that the appellant had
used a trade mark which was deceptively similar to that of the respondent. But this
proceeds, in our opinion, on ignoring that the appellant is not, as we have explained
earlier, entitled to insist on a disclaimer in regard to that word by the respondent. In
these circumstances, the trade mark to be compared with that used by the appellant is
the entire registered mark including the word 'Navaratna'. Even otherwise, as stated in a
slightly different context : (Kerly on Trade Marks 8th Edn. 407)
"Where common marks are included in the trade marks to be compared or in
one or in one of them, the proper course is to look at the marks as wholes and
not to disregard the parts which are common".
3 1 . It appears to us that the conclusion reached by the Courts below that the
appellant's mark is deceptively similar to that of the respondents cannot be stated to be
erroneous. Besides, this question of deceptive similarity is a question of fact, unless the
test employed for determining it suffers from error. In the present case, it was not
suggested that the Courts below had committed any error in laying down the principles
on which the comparison has to be made and deceptive similarity ascertained. (See per
Lord Watson in Attorney-General for the Dominion of Canada v. Attorney-General for
Ontario etc.) [1897] A.C. 199. As there are concurrent findings of fact on this matter,
we do not propose to enter into a discussion of this question de novo, since we are
06-03-2025 (Page 12 of 13) www.manupatra.com NLSIU Bangalore
satisfied that the conclusion reached is not unreasonable.
32. Lastly it was submitted that this was a case of honest concurrent user within s.
10(2) of the Act. This point was, however, not raised in any of the Courts below and we
do not propose to entertain it for the first time in this Court.
33. The result is, the appeals are dismissed with costs - one set of hearing fee.
34. Appeals dismissed.
© Manupatra Information Solutions Pvt. Ltd.

06-03-2025 (Page 13 of 13) www.manupatra.com NLSIU Bangalore