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1 - 10 of 13 (1.36 seconds)Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical ... on 20 October, 1964
8. Mr. S.K. Bansal, learned counsel appearing for the Petitioner submitted
that there was a fundamental error in the approach adopted by the IPAB
inasmuch as it split the mark „GOLD LEAF‟, which was a composite mark,
into „GOLD‟ and „LEAF‟ and compared one part of the mark with the
competing mark of STIPL to determine if there was deceptive similarity.
Moreover, the Respondent‟s trade mark „SONA‟ was used in an artistic
manner with a cup and saucer, and as such, its meaning was highly restricted
having regard to the artistic features involved. On the other hand, the mark
„GOLD LEAF‟ of TITC was a composite one, which in its ordinary
significance could mean a „leaf made of gold‟. According to him, no
significance can be attached to the words „GOLD‟ and „SONA‟. He also
pointed out that the rival trade marks were different phonetically, visually
and even in their idea and otherwise taken as a whole. Reliance was placed
on the judgments of the Supreme Court in F. Hoffmann-La Roche v.
W.P. (C) No. 3451 of 2007 Page 5 of 15
Geoffrey Manners AIR 1970 SC 2062, Amritdhara Pharmacy v. Satya Deo
Gupta AIR 1963 SC 449, Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories AIR 1965 SC 980 and the judgment of the
Bombay High Court in Pidilite Industries Ltd. v. S.M. Associates 2004 (28)
PTC 193 (Bom).
Pidilite Industries Ltd. vs S.M. Associates And Ors. on 10 February, 2003
8. Mr. S.K. Bansal, learned counsel appearing for the Petitioner submitted
that there was a fundamental error in the approach adopted by the IPAB
inasmuch as it split the mark „GOLD LEAF‟, which was a composite mark,
into „GOLD‟ and „LEAF‟ and compared one part of the mark with the
competing mark of STIPL to determine if there was deceptive similarity.
Moreover, the Respondent‟s trade mark „SONA‟ was used in an artistic
manner with a cup and saucer, and as such, its meaning was highly restricted
having regard to the artistic features involved. On the other hand, the mark
„GOLD LEAF‟ of TITC was a composite one, which in its ordinary
significance could mean a „leaf made of gold‟. According to him, no
significance can be attached to the words „GOLD‟ and „SONA‟. He also
pointed out that the rival trade marks were different phonetically, visually
and even in their idea and otherwise taken as a whole. Reliance was placed
on the judgments of the Supreme Court in F. Hoffmann-La Roche v.
W.P. (C) No. 3451 of 2007 Page 5 of 15
Geoffrey Manners AIR 1970 SC 2062, Amritdhara Pharmacy v. Satya Deo
Gupta AIR 1963 SC 449, Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories AIR 1965 SC 980 and the judgment of the
Bombay High Court in Pidilite Industries Ltd. v. S.M. Associates 2004 (28)
PTC 193 (Bom).
J.C. Eno Limited vs Vishnu Chemical Co. on 5 February, 1940
10. Mr. Hemant Singh, placed reliance upon the judgments In Re: Hudnut
121 USPQ 636, Rosenblum v. George Willsher 161 USPQ 492, Madan Lal
Arora v. Soni Udyog 1997 PTC (17) 651 (Del), Bhatia Plastics v. Peacock
Industries Ltd. 1995 PTC 150 (Del), J.C. Eno Ltd. v. Vishnu Chemical
Company AIR 1941 Bombay 3, Hindustan Lever Limited v. Pioneer Soap
Factory 24 (1983) DLT 237, In Re: R.T. Engineering & Electronics Co.
AIR 1972 Bombay 157 and T.G. Balaji Chettiar v. Hindustan Lever Ltd.
AIR 1967 Mad 148.
T.G. Balaji Chettiar vs Hindustan Lever Ltd., Bombay on 26 March, 1965
10. Mr. Hemant Singh, placed reliance upon the judgments In Re: Hudnut
121 USPQ 636, Rosenblum v. George Willsher 161 USPQ 492, Madan Lal
Arora v. Soni Udyog 1997 PTC (17) 651 (Del), Bhatia Plastics v. Peacock
Industries Ltd. 1995 PTC 150 (Del), J.C. Eno Ltd. v. Vishnu Chemical
Company AIR 1941 Bombay 3, Hindustan Lever Limited v. Pioneer Soap
Factory 24 (1983) DLT 237, In Re: R.T. Engineering & Electronics Co.
AIR 1972 Bombay 157 and T.G. Balaji Chettiar v. Hindustan Lever Ltd.
AIR 1967 Mad 148.
Surya Roshni Limited vs Electronic Sound Components Co. on 8 February, 1994
18. It appears that some of the High Courts have been persuaded to deny
registration of marks which were the English equivalents of a regional word.
For instance, in Bhatia Plastics this Court held that the Plaintiff had been
using the trade mark „MAYUR‟ for a long time and, therefore, the adoption
by the Defendant for its mark the English equivalent of that word i.e.
„PEACOCK‟ was likely to cause deception and confusion. The Court relied
on Surya Roshni Limited v. Electronic Sound Components Company
W.P. (C) No. 3451 of 2007 Page 13 of 15
where the two competing marks were Sanskrit words i.e. „BHASKAR‟ and
„SURYA‟ both of which meant the „Sun‟. It was held that one of them was
likely to cause deception and confusion in the minds of the average
consumer. Likewise, in Hindustan Lever Ltd., this Court viewed the mark
„SURAJ‟ as being equivalent to the English word „SUN‟ and since
Hindustan Lever Limited had a registration for its mark Sunlight for soap,
the Defendant should be restrained from using the mark „SURAJ‟ in relation
to washing soap. In T.G. Balaji Chettiar the application for registration of
the trade mark „Surian‟ was denied as it was a Tamil word which when
translated into English meant „SUN‟ which was the prominent part of an
already registered mark. However, each of the above decisions are
distinguishable in their application to the instant case where the two marks
do not have the same number of words and when Gold Leaf is translated into
Hindi it should read „Sona (ka) patta‟ and not just „Sona‟.
Marks need to be compared as a whole
Section 8 in The Trade And Merchandise Marks Act, 1958 [Entire Act]
Section 8 in The Trade Marks Act, 1999 [Entire Act]
F. Hoffmann-La Roche & Co. Ltd vs Geoffrey Manners & Co. Pvt. Ltd on 8 September, 1969
8. Mr. S.K. Bansal, learned counsel appearing for the Petitioner submitted
that there was a fundamental error in the approach adopted by the IPAB
inasmuch as it split the mark „GOLD LEAF‟, which was a composite mark,
into „GOLD‟ and „LEAF‟ and compared one part of the mark with the
competing mark of STIPL to determine if there was deceptive similarity.
Moreover, the Respondent‟s trade mark „SONA‟ was used in an artistic
manner with a cup and saucer, and as such, its meaning was highly restricted
having regard to the artistic features involved. On the other hand, the mark
„GOLD LEAF‟ of TITC was a composite one, which in its ordinary
significance could mean a „leaf made of gold‟. According to him, no
significance can be attached to the words „GOLD‟ and „SONA‟. He also
pointed out that the rival trade marks were different phonetically, visually
and even in their idea and otherwise taken as a whole. Reliance was placed
on the judgments of the Supreme Court in F. Hoffmann-La Roche v.
W.P. (C) No. 3451 of 2007 Page 5 of 15
Geoffrey Manners AIR 1970 SC 2062, Amritdhara Pharmacy v. Satya Deo
Gupta AIR 1963 SC 449, Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories AIR 1965 SC 980 and the judgment of the
Bombay High Court in Pidilite Industries Ltd. v. S.M. Associates 2004 (28)
PTC 193 (Bom).