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19. The learned counsel appearing for the fourth respondent submitted that the petitioner has nowhere contended that IMPERIAL-GOLD and IMPERIAL-BLUE are deceptively similar, but would contend that it has added its trade name Rhizome's to IMPERIAL GOLD, which is sufficient to distinguish their product. Thus their contention is based on the added matter which is liable to be rejected in the light of the the decisions of the Hon'ble Supreme Court in the case of Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, reported in AIR 1965 SC 980 and Ruston & Hornsby Ltd. v. Zamindara Engineering Co., reported in AIR 1970 SC 1649. It is submitted that applying the test of infringement, the trade mark Rhizome's IMPERIAL GOLD is in breach of Section 11(1) and Section 29 of the Act and the IPAB rightly cancelled the same. As regards the deceptive similarity by referring to the decisions of the Hon'ble Supreme Court in the case of Amritdhara Pharmacy v. Satya Deo Gupta, reported in AIR 1963 SC 449, Corn Products Refining Co. v. Shangrila Food Products Ltd., reported in AIR 1960 SC 142 and Parle Products (P) Ltd. v. J.P. and Co., reported in AIR 1972 SC 1359, it is submitted that the test of descriptive similarity is to be applied by examining the structural or phonetic or conceptual similarity between the competing trade marks. The competing marks IMPERIAL BLUE and IMPERIAL GOLD have same structure, they are phonetically similar, convey the same in idea and impression as it constitutes a combinative use of IMPERIAL PLUS COLOUR. It is further submitted that the essential feature of IMPERIAL BLUE has been taken by the trade mark IMPERIAL GOLD and the same is in breach of Section 11(1) of the Act.

29. In Kerly on Trade Marks, 8th Edition, 407, referred to by the Hon'ble Supreme Court in the case of Durga Dutt Sharma (supra), it was stated that where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as whole and not to disregard the parts which are common.

30. In the case of Parle Products (P) Ltd., (supra), which considered the case of the appellant pertaining to the word "Gluco" used on their biscuit packets and the wrapper known as "Parle's Gluco Biscuits", the Hon'ble Supreme Court held that in order to come to the conclusion whether the 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 and if so, whether they are of such character as to prevent one design from being mistaken for the other and it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

31. In the case of Gufic Ltd., & Anr., (supra), the Division Bench of the High Court of Delhi, referred to the decisions in the cases of Ruston & Hornsby Ltd. (supra), Amritdhara Pharmacy (supra), Corn Products Refining Co. (supra), and Parle Products (P) Ltd. (supra), and on facts found that the marks SKINCLINIQ" as a whole in comparison with the registered mark CLINIQUE" are not structurally or phonetically similar and taking a overall view of the marks, a person of average intelligence would not be deceived by the mark SKINCLINIQ" into believing that it is, in fact, the mark CLINIQUE", as the mark is not just CLINIQ", but SKINCLINIQ", which is one word and not two separate words as in Rustam's case and Cleanzo's case.