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(d) that the appellant had obtained prohibitory orders against the very same respondent as well as others restraining them from using similar marks and that therefore the dismissal of the application for rectification by the Registrar and the dismissal of the appeal by the learned Judge were erroneous.

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4. In support of her contentions, the learned Counsel for the appellant relied upon the decisions of the Apex Court in Amritdhara Pharmacy v. Satya Deo Gupta , Parle Products (P) Ltd., v. J.P. & Co and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in 2001 (1) CTMR 288 (SC). She also relied upon the decisions of this Court in Arvind Laboratories v. V. Annamalai Chettiyar reported in 1981 (1) MLJ 75, Arvind Laboratories v. V.A. Samy Chemical Works reported in AIR 1987 Madras 265 and Jamna Products Manufacturer of Kanmaie v. Arvind Laboratories reported in 2003 (27) PTC 409.

6. Coming to the 3rd contention of the learned Counsel for the appellant, that in order to find out whether a mark is identical to or deceptively similar to another mark, the marks should be looked at as a whole and the words cannot be split, it is seen that this contention rests upon the claim of the appellant that there is phonetic similarity between the words "EYETEX" and "IRIS" (or EYERIS as projected by the appellant).

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7. In support of the said contention, the learned Counsel relied upon the decisions of the Apex court in Amritdhara Pharmacy v. Satya Deo Gupta , Parle Products (P) Ltd. v. J.P. & Co and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in 2001 (1) CTMR 288 (SC). In Amritdhara's case, the Supreme court was dealing with the words Amritdhara and Lakshmandhara and held that the words had overall structural and phonetic similarity. It was further held by the Supreme court in the said case that "the trade mark is the whole thing-the whole word has to be considered". In Parle Products (P) Ltd's case the Supreme court held that "In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design." In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in 2001 (1) CTMR 288 (SC), the Supreme court, relied upon its earlier decision in Amritdhara's case and held that "It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion."

8. But in all the above cases, phonetic similarity alone was not taken to be the sole deciding factor. On the other hand, the Supreme Court emphasized the need to apply the test of "overall structural and phonetic similarity" in Amridhara's case and "visual and phonetic tests" in Cadila's case. Similarly, the Supreme Court applied the test of "broad and essential features" in Parle Products case.

9. Applying these tests of "overall structural and phonetic similarity", "visual and phonetic similarity" and "broad and essential features", to the case on hand, it is seen that the trade mark of the respondent (of which rectification is sought for by the appellant) consisted of a word mark in Tamil reading as "IRIS". Admittedly, the trade mark of the appellant consisted of a word mark in English reading "EYETEX" along with an artistic picture of a human eye. Therefore, the Registrar found that there was no structural or overall or visual similarity, though there was a phonetic similarity in so far as the first part of the word was concerned. The said phonetic similarity in the first part of the word also vanished when the word was taken as a whole along with the second part of the word. Therefore the Registrar as well as the learned Judge were right in coming to the conclusion that the marks were not identical or deceptively similar to each other.