Trademark Case Brief – F. Hoffmann-La Roche v Geoffrey Manners

Citation – 1970 AIR 2062, 1970 SCR (2) 213

Facts: The appellant is a limited liability company incorporated under the laws of Switzerland and carries on business in the manufacture and sale of pharmaceutical and chemical products. The respondent is a company incorporated under the Companies Act in India and also carries on business in the manufacture and sale of pharmaceutical products. On December 2, 1946 the appellant applied for registration of its trademark “PROTOVIT” and it was granted. Thereafter the appellants used that mark on multi-vitamin preparations in liquid and tablet forms and its goods are being sold under that mark at least since the year 1951. On January 28, 1957 the respondent applied for registration of its mark “DROPOVIT” in respect of “medicinal and pharmaceutical preparations and substances”. The application was registered but the advertisement of the respondent’s application escaped the notice of the appellant who did not hence oppose the registration. Later the appellant’s agents drew the attention of the appellant to the respondent’s mark “DROPOVIT”. There was a negotiation between the parties but the negotiations failed. The appellant applied for rectification of the Register by removal therefrom of the respondent’s trademark on the ground that the respondent’s mark resembled the appellant’s mark which is likely to deceive or cause confusion. Later they amended the application and added additional ground that “DROPOVIT” was not an invented word. The Joint Registrar rejected the application and held that “DROPOVIT” was not deceptively similar to “PROTOVIT” and that the word “DROPOVIT” considered as a whole was not descriptive.

Issues:
1) Whether the word “DROPOVIT” is deceptively similar to the word “PROTOVIT”?
2) Whether the word “DROPOVIT” was an invented or descriptive word

Holding: It was held that the High Court and the Joint Registrar of the Trade Marks were correct in emphasizing that there was no persisting tangible threat of misperception if the respondent’s trademark was permitted to remain to remain on the Register. Further, the court opined that “DROPOVIT” was an invented word by the virtue of it not falling under the ambit of a descriptive word. The petition therefore failed and was dismissed with costs.

Rationale: For the purposes of the first issue, the Supreme Court went into the meaning of the words “to deceive” and “to cause confusion”. They concluded with regard to Parker- Knoll International Ltd, that while deceiving involves making false representations to make a person believe what is otherwise not the truth (even if this is done without knowledge and intention), confusion may be caused as a consequence of one’s disability or lack of knowledge to extricate the truth stated to him from what is already known to him, perhaps because he chooses not to take the trouble to do so.
The test for comparing two trademarks was articulated by Lord Parker in the case of Pionotist Co Ltd. It was put forth that to begin with, the two marks must be judged by their appearance and sound. The nature of the goods and the target customers to which they would be attributed must also be accounted for, alongside the surrounding circumstances. If confusion in the minds of the public is the foreseeable result of allotting the trademarks, then registration ought to be denied. The precise elucidation of law was recognized by the court in the passage of Lord Justice Luxmoore in the Court of Appeal. It was indicated that similarity must be ascertained on the basis of the first impression since only an individual who is aware of one word and has an imperfect recollection of the same is likely to be confused. It was also pointed out that the totality of the suggested word should be such that is likely to cause deception or confusion in the minds of the persons habituated to the prevailing trademark and merely the corresponding portions must not be compared. Applying this in the present case, it was held that if one emphasizes the uncommon components in the two words, it is difficult to establish that one would be confused with the other. Accounting for letters ‘D’ and ‘P’ in “DROPOVIT” and the corresponding letters ‘P’ and ‘T’ in “PROTOVIT”, it was believed that they cannot be slurred over in pronunciation and their differences made it reasonably impossible to mistake the words visually and phonetically. To add to this, the Court also took note of Section 61(2) of the Drug Rules, 1945 and highlighted that since preparation of vitamins falls under item 5 of Schedule C (1), a license is mandatory for its preparation and sale. This combined with the fact that a prescription is needed before purchase makes the possibility of confusion remote. Finally, since 57 trademarks have been registered with suffix ‘VIT’, an average customer is presumed to be on his guard and take special care.
With regard to the second issue, the Supreme Court turned to the Diabolo case, where Parker J. expounded upon the meaning of “inventive word”. He said that such a word must be newly coined and must not bear any conventional or apparent meaning unless one has been allotted to it. The High Court had pointed that the original application for rectification contained no ground underlining that “DROPOVIT” was a descriptive word. This implied that it did not even strike the legal advisors of the appellants that “DROPOVIT” was not an inventive word in the first instance. To add to this, Justice Tarkunde had pronounced that he did not see “DROPOVIT” to mean “DROP OF VITAMINS” till a description was given to him. Hence, the Court, not having reasons to believe otherwise, did not overturn the decision of the lower courts.

Rule:
1) In an order to see whether a trademark is deceptively comparable to the other, it is not imperative that it is intended to deceive or cause confusion. In fact, its probable outcome on the ordinary customers is considered by taking imperfect recollection as the benchmark. While both visual and phonetic tests are put into play, the marks are also looked at in their totality and not in parts to see if deception or confusion is the outcome in the minds of the individuals familiar to the existing trademark.
2) To qualify as being an inventive word, a word must be newly coined and must not convey any ordinary or obvious meaning unless one is designated to it.