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AIR 1965 SUPREME COURT 980 :: 1965 KER LJ 690
Supreme Court Of India
(From Kerala: AIR 1962 Kerala 156)20th October, 1964 .

HON'BLEJUDGE(S): P. B. GAJENDRAGADKAR , J.C. SHAH , N. RAJAGOPALA

A YYANGAR, JJJ

KAVIRAJ PANDIT DURGA DUTT SHARMA V. NAVARATNA PHARMACEUTICAL LABORATORIES

Civil Appeals Nos. 522 and 523 of 1962,, decided on 20/ 10/ 1964

(A) Trade Marks Act (5 of 1940) , S.6(1)(d), S.6(3) Proviso- Trade mark -
Registration of - Requi s ites for - "Words having no
@ page-SC981dire ct reference" - Words "pharmaceutical Laboratories" have
direct reference to character of goods - But length of user of such words is
material factor for trade mark being regi ste red under Proviso to sub-sect. (3).
Trade and Merchand ise Marks Act ( 4 3 of 1958) , S.9-
If the registration of a trade 1nark "Navaratna Pharmaceutical Laboratories" were to be decided
in ter1ns ofS. 6(1) alone without reference to the ter111s of the Proviso to sub-sec. (3) of S. 6, the
prohibition in S. 6 ( 1)(d) is attracted to this mark and it will not be registered. For, 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 1nedicinal or pharmaceutical
products.
But where the fir1n carries on its business under the above trade mark or a permissible variant of
that 1nark from long before the 25th February 1937, and in consequence, notwithstanding that
the mark might not satisfy the requirements of S. 6(1) as explained by sub-ss . (2) and (3) of that
section, still it is registrable as a trade Mark by virtue of the proviso to S. 6(3) of the Act. In
order to bring the matter under the said proviso it is enough if it is shown-
(!) that 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; and
(2) that there is 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
consUinption.
Thus, there should be a finding that by reputation the mark had come to denote the goods of the
firm. Length of user will be a material factor for the 1nark to become distinctive. (Para 16)

(B) Trade Marks Act (5 of 1940) , S.6(3) Proviso- Construction of Proviso -

Proviso is not otiose.
4 9 Cal WN 4 2 5, Expl. Trade and Merchandise Marks Act ( 4 3 of 19 58) , S.9-
23
The use of the words "as aforesaid" in the words of the Proviso to sub-sec. (3) of S. 6 "shal{Para )
not refuse registration by reason only of the fact that the trade 1nark is not adapted to distinguish

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as aforesaid" takes one back first to sub-s . (3) and then on to sub-s . (2) and necessarily also 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. (Para 20 )

It will 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 1narks and new 1narks being placed on the same footing and being subjected to
the same tests for registrability cannot be accepted. (Para 2 1)

A 1nark 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, possible to conceive of cases where even if the Proviso to S. 6(3) were construed
in the manner indicated above, there would still be scope for the rejection by the Registrar of a
trade 1nark in use prior to the specified date.
(C) Trade Marks Act (5 of 1940) , S.21- Action for passing off and action for
infringement of trad e mark - Difference between.
Trade and Merchand ise Marks Act ( 4 3 of 1958) , S.2 8-
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. But that is not, the gist of an
action for infringement. The action for infringement is a statutory re1nedy 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. 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 i1nitation of a trade mark in a passing off
action would also be such in an action for infringement of the sa1ne trade mark. But there the
correspondence between the two ceases. In an action for infringe1nent, the plaintiff must, no
doubt, make out that the use of the defendant's mark is likely to deceive, but where the
si1nilarity between the plaintiffs and the defendant's 1nark is so close either visually,
phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no
further evidence is required to
establish that the plaintiffs 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 1nark would be i1nmaterial; whereas in the case of passing off,
the defendant may escape liability if he can show that the added matter is sufficient to
(Para 2 8)
distinguish his goods from those of the plaintiff.
(D) Trade Marks Act (5 of 1940) , S.21- Action for infringement of trade

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mark- Burden of proof - Identification of- essential features of trade mark s .

Trade and Merchandise Marks Act ( 4 3 of I 9 58) , S.2-
When once the use by the defendant of the 1nark which is claimed to infringe the plaintiffs mark
is shown to be "in the course of trade", the question whether there has been an infringement is to
be decided by co1nparison of the marks . Where the two marks are identical no further questions
arise; for then the infringement is made out. When the two 1narks are not identical, the plaintiff
would have to establish that the 1nark used by the defendant so nearly resembles the plaintiffs
registered trade 1nark as is likely to deceive or cause confusion and in relation to goods in
respect of which it is registered . Where the question arises in an action for infringement the
onus would be on the p laintiff 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, is deceptively similar.
This has necessarily to be ascertained by a co1nparison of the two marks- the degree of
resemblance which is necessary to exist 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
p laintiffs mark. The purpose of the comparison is for determining whether the essential features
of the plaintiffs 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 j udgment 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 1nark of
the plaintiff.
Case Referred • Chronological Paras
('57) AIR 1957 All 683 (V 44) Ram Rekhpal v. Amrit Ohara Pharmacy
Para No.( 19 )
('45) 49 Cal \VN 425, In the matter of India Electric \Vorks Ltd.
Para No.( 18. 23 )
(1888) 6 RPC 379, In re, Dunn
Para No.( 12 )
(1897) 1897 AC 199, Attorney General for the Donunion of Canada v. Attorney General for Ontario
Para No.( 3 1)
(1913) 19 13 AC 624 : 83 LJ Ch. I, T rade Marks Registrar v. Du Cros (Wand G) Ltd.
Para No.( 14 )
(1928) 46 RPC 99, In Re, Liv erpool Electric Cable Co. Ltd's Applications
Para No.( 14 )
(1938) 1938 AC 557 : 107 LJ Ch 193, Gaustonbury's case; Baily and Co. Ltd. v . Clark, Son and Morland
Para No.( 14 )
(1954) 71 RPC 150, Yorkshire Copper Works Limited's Appln, for Trade Marks
Para No.( 14 )
(1954) 1954-1 All ER 570: 1954-1 WLR 554, Yorkshire Copper Works, Ltd. v. Registrar of Trade Marks
Para No.( 14 )
(1959) 1959 RPC 344, In the n1atter of American Screw Coy's Application
Para No.( 13 )
Name of Advocates

Mr. C. B. Agarwala Senior Advocate, (Mr. N . K. Anand, Advocate and Mr. J. B. Dadachanji,
Advocate of Mis. J.B. Dadachanji and Co., with him), for Appellant (In both the Appeals); Mr. G.
S. Pathak, Senior Advocate, (Mr. Sardar Bahadur, Advocate, with him), for Respondent (In both the
Appeals) :The following Judgment of the Court was delivered by:

I. AYYANGAR, J.: These two appeals, by special leave, are concerned with the validity of the
respondent firm's clai1n as the registered proprietor of a Trade Mark 'Navaratna Pharmaceutical

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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 Ernakula1n in the same name and style as the Trade Mark now in controversy -
"Navaratna Pharmaceutical Laboratories". As its name indicates, the fir1n 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 fro1n
January 194 5 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 Dece1nber, 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 si1nilar to the Indian Trade
Marks Act, 1940 was enacted in the State of Cochin (Vide the Cochin Trade Marks Act 19 of
1119 (1944)) the respondent-fir1n registered the word 'Navaratna' as a Trade Mark in respect of
its 1nedicinal preparations, on January 31, 194 7 and another 1nark consisting of the words
'Navaratna Phar1naceutical Laboratories' to denote the same products ofFebruary 17, 1948. There
is evidence that the respondent-firm has been having an expanding business in the products
which it 1nanufactures and has been selling the sa1ne 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 arrange1nents with Indian States for mutual recognition of Trade Marks registered
in the other territory. There was a similar provision in S. 78A 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 Bo1nbay. 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. These applications was advertised in
April , 19 50 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.

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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 re1noving 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 fil ed suit N o. 233 of 1951 (from which C.
A. N o. 522 of 1962 arises) before the District Judge, Anjikaimal for a permanent injunction
restraining the appellant from advertising, sel ling or offering for a sale any preparations under a
trade 1nark combining the word 'Navaratna' or any simi lar w ord 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' 1nark. The appellant accordingly fi led 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 fro1n 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 N o.
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 defendants (appellant before
us) advertising his goods under the name "Navaratna Kalpa" with the trade origin of the goods
being described as ''Navaratna Kalpa Phar1nacy". There was also an allegation that by use of
these 1narks 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 co1nposition 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 its phar1naceutical preparations .
1. (b) As regards the trade mark "Navaratna Pharmaceutical Laboratories" which was in fact the
na1ne 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 exclus ive use
of the word "Navaratna" to designate its products, the combination of that word with the two

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other words "Phar1naceutical" and "Laboratories" were ord inary English words descriptive of the
place where medicines were prepared could not render the trade mark a registrable one. For these
two reasons the defence was that no clai1n could be made to relief under S. 21 of the Trade Marks
Act, 1940.
(2 ) Next, it was sub1nitted that even on the basis that the plaintiff was entitled to the use of the
word ''Navaratna" either alone or in the co1nbination ''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 si1nilar to the plaintiffs marks
and therefore he was not guilty of any infringe1nent.
(3) As regards the claim for relief on the basis of passing off, the defendant laid stress upon the
packing, get-up and the 1nanner 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 getup etc. on which the defence had relied, the defendant was not
guilty of passing off; (2) that the word "Navaratna" was a co1nmon 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 ti1ne 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 trade na1ne ''Navaratna Phar1naceutical
Laboratories " or some variant of the same had been used as a trade mark by the plaintiff for a
very long time and 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 been used long before February 25, 1937 and having acquired factual
distinctiveness, was registrable under the proviso to S. 6(3) of the Act. The Plaintiff was,
therefore, granted a decree for an injunction confined to the trade mark "Navaratna
Pharmaceutical Laboratori es".
9. From this judg1nent the appellant filed an appeal to the High Court and the learned Judges

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heard the appeal along with the Original Petition under S. 46 of the Act filed by the appellant. By
a com1non judgment the learned Judges confir1ned 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 clai1n to the trade 1nark "Navaratna Phar1naceutical
Laboratories" as a validly registered mark was really inconsistent with their finding that
"Navaratna" which was the crucial and i1nportant word in that trade 1nark was a descriptive word
in regard to which the respondent could obtain no exclusive right by any a1nount of user. His
further sub1nission 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 no 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 registrabi lity of trade 1nark 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 registrable except upon evidence of
its distinctiveness .
(2 ) For the purposes of this section, the expression 'distinctive' means adapted, 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 1nark 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 subj ect to limitations, in relation to use within the extent of the
registration.
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(3) In determining whether a trade mark is adapted to distinguish 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
s o 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
for1n or with additions or alterations not substantially affecting its identity) in relation to which
registration is applied for, during a period from a date prior to the 2 5th day of February, 193 7, 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 sub1nitted
that the words 'Phar1naceutical' and 'Laboratories' could neither by themselves , nor in
co1nbination with it confer upon the 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 ter1ns of the proviso to sub-s . (3) to which we shall advert presently, we
see great forc e in the submission of the learned Counsel.
12. As Fry, L. J. said in re: Dunn,(1888) 6 RPC 379 at p. 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
s o .... 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 co1nmon of the Engl ish 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 Coy's Appln. 1959 RPC 344 at 346) :
"Direct reference corresponds in effect to aptness for nor1nal description".
14. Judged by this test it could not be serious ly contended that the prohibition in S. 6( 1) (d) would
be attracted to this 1nark. In the present case, the w ords 'Pharmaceutical and 'Laboratories' would

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have a direct reference to the character of the goods since the trade 1narks 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 RPC 150 - Yorkshire Copper
Works Ltd . v. Registrar of Trade Marks ( 1954-1 All ER 570) was an appeal from the Court of
appeal affirming the decision of the Divisional Court which rejected an appeal against an order of
the Registrar refusing to
register the trade Mark "Yorkshire" for "solid drawn tubes and capillary fitting s all made of
copper or non-ferrous copper alloys". The refusal to register was on the ground of the word being
geographical and s o being disqualifi ed for registration under a provision of the U. K. Trade
Marks Act of 1938 - identical in terms with S. 6(l)(d) of the Act. The applicants led evidence to
establish and claimed that they had established that everyone conceived in the trade in copper
tubes understood "Yorkshire Tubes" as 1neaning the products of the applicant. It was therefore
contended that the word 'Yorshire' had lost its primary geographical significance and had
become 100 per cent distinctive of the applicant's goods . In dismissing the appeal Lord Simon the
Lord Chancellor observed :
"I a1n content 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 unani1nous opinion of the Court of
appeal ...... Here I must express 1ny e1nphatic dissent from the proposition which was strenuous ly
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 W and
G case, ( 1913 AC 624) and the Glastonbury case, (1938AC 557) are fata l 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, (1928) 46 RPC 99, rightly interpreted the opinion of Lord Parker in the
W. and G, case, ( 191 3 AC 624) and that this House, in its turn, in the Glastonbury case, (1938
AC 557) 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 heeded to no regard to the other factor of inherent adaptability, he was fac ed 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 is 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 clai1n for his own a territory,

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whether country, or town, which may be in the future , if it is not now, the seat of manufacture of
goods si1nilar 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 into these detai ls as
they are unnecessary for our present purpose. The learned Counsel is therefore right in his
sub1nission that if the right of the respondent to the registration of his 1nark had to be considered
s olely on the terms of S. 6( 1), the appellant's sub1nissions 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 1nanufacturer of goods beaing 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 per1nissible variant of that mark from long before the 25th February
193 7, and that in consequence, notwithstanding that the mark might not satisfy the requirements
of S. 6(1) as explained by sub-ss . (2) and (3) of that section, still it was registrable 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 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 1nark had come to denote the goods of the respondent.
Besides, the words were not a 1nere 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 along user the mark had beco1ne 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, 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 1nark has acquired distinctiveness as a 1natter of fact, and there being no error of law
in the criteria applied for reaching the1n, 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 s o.
What he, however, submitted was that on a proper construction of the proviso to S. 6(3) of the
Act marks which fro1n 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,

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to be registrable .
18. This takes us to the consideration of the proper construction of the proviso. Closely exa1nined,
the argument 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
sub1nission was that in cases where the mark fell within the prohibition of cl. ( 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 co1nments in S. 6(3) at pages 152 - 154 of
his Treatise of Trade Marks Act, 1940 which view he sub1nitted had found judicial acceptance in
a decision of the Calcutta High Court reported as in the matter of, India Electric Works Ltd. 49
Cal WN 425.
19. Before proceeding further we should add that there is a decision of the Allahabad High Court

in Ram Rekhpal v. Amrit Dhara Pharmacy, AIR 1957 All 683 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 ca1ne within the
prohibition in cl. ( d) of sub-s . ( 1) of S. 6, an old mark i.e., marks in use from before February 2 5,
193 7 would qualify for registration if there was evidence of factual acquired distinctivenss. 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 1nay 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 co1nment 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 2 5, 193 7. 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 Phar1naceutical 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 1narks. It was
not contended before the Courts below or before us that the 1nark 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 1nay accept evidence of acquired distinctiveness as entitling a mark for
registration notwithstanding the fact that "the trade 1nark is not adapted to distinguish as
aforesaid" could apply to cases where the trade 1nark has a direct reference to the character or
quality of the goods or is otherwise not qualified for registration under cl. ( d) of sub-s . ( 1). The
entire argUinent on this part of the case is 1nerely based on the use of the expressions 'adapted to
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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
sub1nitted for registration was "not adapted to distinguish as aforesaid", that is, that the 1nark did
not fulfil the requirements of the tests suggested by the main part of sub-section (3), he was
authorised to per1nit 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
defin ed in sub-section (2) where it is stated to mean practically "adapted to distinguish", the
content and the significance of which is elaborated in sub-section (3) . The sub1nission was that at
that stage, when accepting evidence of acquired distinctiveness one is again thrown back on sub-
sections (2) and (3) , with the result that unless the tests of distinctiveness and of "adaptation to
distinguish" which are explained in sub-sections (2) and (3) are satisfied, no amount of
evidence led before the Registrar of factual acquired distinctiveness w ould suffice to per1nit
registration. In other words, the argument was that if a mark was one which was prohibited fro1n
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 fal ling 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 was accepted , the proviso adds nothing to the section and
makes no variation in the law as regards old marks which had been in the use continuously fro1n
before the specified date, it would also make 1neaningless the words 'shall not refuse registration
by reason only of the fact that the trade 1nark 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) is
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 1night exclude what is negatived
by S. 6( 1)( d) . But that, however, does not solve the proble1n 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
then on to sub-s. (2) and necessarily also to the provision in S. 6( 1) ( d) where 1narks which are
incapable of acquiring distinctiveness are dealt with . Hence even on the terms of the provis o
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 .
21. 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
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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 :
"(l) 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 1nark 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 has been in use prior to February 2 5, 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 conte1nplated by S. 20 of the Act could
never arise. This was stated to support the construction of the proviso which learned Counsel
co1nmended 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 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
49 Cal WN 425 on which Mr. Agarwala relied in this connection.
24. 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(l)(d). The learned Judge also
considered whether the 1nark 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 1natter. Proof of user, the learned Judge held , was not ipso jure proof of

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acquired distinctiveness and this is obvious ly r ight and does not advance the appellant's
sub1nission in regard to this question. Though there are so1ne observations which might be wider,
it substantially proceeded on accepting the finding of the Registrar regarding the applicant
having fail ed 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 out earlier, there are concurrent find ings of fact on this point that through
long user from 1926 onwards, the 1nark had beco1ne associated exc lusively in the market with the
pharmaceutical products manufactured by the respondent. That find ing 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 fro1n 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 Phramacy'"so nearly rese1nbled 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 1nark is deceptively
similar to the respondent's . On this 1natter also, there are concurrent findings of the Courts below
regarding the deceptive si1nilarity of the two marks . That the words 'Nivaratna Pharmacy' and
'Navaratna Phar1naceutical 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 co1nmon use in the trade in
Ayurvedic preparations and the Courts rightly held the respondent could not clai1n 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 disclai1ning exclusive rights to
the word 'Navaratna' in the trade mark 'Navaratna Pharmaceutical Labortories' or that the
disclaimer should have been ordered as a condition of the trade mark re1naining on the register
under S. 13 of the Act, (2) The finding by the Courts below that the 1narks 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 war not likely to cause any confusion in the
market or deceive any purchasers, vary or otherwise on the basis of which the clai1n for passing
off was rejected.
27. As regards the first contention regarding disclaimer and the reference to S. 13, the 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 1nade 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 .

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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 infringe1nent of a
registered trade mark. We have already pointed out 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 mark. 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 1nanufactory of the appellant was
pro1ninently 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 1nark or a colourable imitation 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 infringe1nent. The action for infringement
is a statutory re1nedy 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 imitation of a trade mark in a passing off action would also be such in an action
for infringement of the same trade 1nark. But there the correspondence between the two ceases. In
an action for infringement, the plaintiff must, no doubt, 1nake out that the use of the defendant's
mark is likely to deceive, but where the si1nilarity between the plaintiffs and the defendant's
mark is so close either visually, phonetically or otherwise and the court reaches the conclusion
that there is in imitation, no further evidence is required to establish that the plaintiffs 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 1narked differences, or
indicate clearly a trade origin different from that of the registered proprietor of the mark would
be immaterial; whereas in the case of passing off, the defendant may escape liability if he can
show that the added 1natter is sufficient to distinguish his goods fro1n those of the plaintiff.

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29. When once the use by the defendant of the mark which is claimed to infringe the plaintiffs
mark is shown to be "in the course of trade", the question whether there has been an infringement
is to be decided by co1nparison of the two marks. Where the two marks are identical no further
questions arise; for then the infringe1nent is made out. When the two 1narks are not identical, the
plaintiff would have to establish that the mark used by the defendant so nearly resembles the
plaintiffs 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 so1neti1nes 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 some ti1nes been answered by saying that it is 1nerely an extension
of the ealier 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, is deceptively si1nilar. This has
necessarily to be ascertained by a co1nparison of the two marks -the degree of resemblance which
is necessary to exist 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 plaintiffs mark. The purpose of
the co1nparison is for determining whether the essential features of the plaintiffs 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 judg1nent 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 1nark used by the defendant as a whole is
deceptively similar to that of the registered mark of the plaintiff.
30. The 1nark of the respondent which he claims has been infringed by the appellant is the mark

'Navaratna Pharmaceutical Laboratories', and the 1nark of the appellant which the respondent
claimed was a colourale imitation of that 1nark is 'Navaratna Phamacy'. Mr. Agarwal a 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 1nark were disregarded, there would not be enough material left for holding that
the appellant had used a trade mark which was deceptively si1nilar 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 circUinstances,
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 1narks are included in the trade marks to be compared or in one of them, the

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proper course is to look at the 1narks as whole and not to disregard the parts which are common".
31. It appears to us that the conclusion reached by the Courts below that the appellant's 1nark is
deceptively similar to that of the respondents cannot be stated to be erroneous. Besides, this
question of deceptive si1nilarity is a question of fact, unless the test employed for deter1nining 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 Do1ninion of Canada v.
Attorney-General for Ontario, 1897 AC 199. As there are concurrent findings of fact on this
matters, we do not propose to enter into a discussion of this question de novo, since we are
satisfied that the conclusion reached is not unreasonable.
32. Lastly, it was sub1nitted 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 ti1ne in this Court.
33. The result is, the appeals are dismissed with costs - one set of hearing fee.
Appeals Dismissed

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