JUDGMENT
P.S. Kailasam, J.
1. This is an appeal preferred by the applicant, V.R. Subramanyam in Application for rectification No. MAS. 9 before the Assistant Registrar of Trade Marks, Madras, by removing therefrom the trade mark No. 176062 registered in the names of the respondents consisting of the word “Roji.” The application was dismissed by the Assistant Registrar of Trade Marks, Madras, holding that the trade mark No. 176062 was not made without sufficient cause. This appeal is preferred against that order refusing rectification.
2. The business of the applicant was started by the father and predecessor-in–title of the applicant as V. Raju Mudaliar and Sons, in the last decade of the last century and was manufacturing and selling perfumery and allied preparations under the trade mark “Raja”. The applicant, who established his concern Manyam & Company in 1920 and acted for sometime as distributors for Raja products of Messrs. V. Raju Mudaliar and Sons, later amalgamated and continued the manufacture and sale of his products under the name and style of Messrs. Manyam & Company. The trade mark “Raja” in respect of toilets, cosmetics, etc., was lawfully used as an unregistered trade mark for the last several deoades and is being used as a registered trade mark for the past many years. The trade mark “Raja” was registered on 23rd September, 1943. The applicant stated that he had spent several lakhs of rupees in the advertisment of his trade mark and that the popularity and reputation of the trade mark “Raja” is well established in Madras.
3. The respondent applied for the registration of the trade mark “Roji” on 3rd September, 1956. It was advertised in the Journal on 1st December, 1956 and subsequently the registration was ordered. On 24th October, 1960 the present application was filed for rectification of the register by removal of the mark “Roji” from the register. The ground alleged for rectification was that the name was registered m the books in violation of Sections 9,11 and 12 of the Trade and Merchandise Marks Act, 1958.
4. The respondent denied that the registration of the name “Roji” is prohibited under Sections 9, 11 and 12 of the Act. He also contended that the mark that was 5registered was not identical with or deceptively similar to the trade mark registered in the name of the petitioner. He also contended that the petition for rectification of the register was belated and not bona fide and that the applicant had no locus standi to ask for the rectification of the register.
5. The Assistant Registrar of Trade Marks found that the applicant had locus standi to prefer the application. He also found that the goods for which the trade mark was registered were the same and were of the same description as that of the applicant. He found that there was no contravention of Sections 9, 11, 11(a) or 12(1) of the Act and that the mark was not liable to be removed from the register.
6. It is admitted that the applicant was trading with the registered name “Raja” and that that mark has earned a reputation in the market. It is also admitted that considerable sums of money had been spent by the applicant for advertisement of his trade mark “Raja”. It is also not denied in this appeal that the applicant is entitled to maintain the application for rectification of the register.
7. Mr. V. Thiagarajan, learned Counsel for the appellant, contended that the registry of the name “Roji” is contrary to the provisions of Sections 9(1), 11(a) and 12(1) of the Act and it is liable to be removed from the register. Section 9(1) of the Act provides that a trade mark shall not be registered in Part ‘A’ of the register unless it contains or consists of at least one of the essential particulars given in Sub-sections (a) to (e). Sub-section (d) prohibits the use of a word which is a geographical name or a surname or a personal name. A geographical name, a surname or a personal name cannot be registered except upon evidence of its distinctiveness. It is the contention of the learned Counsel for the appellant that the name “Roji” is a surname and, as it has not acquired any distinctiveness, it should not be registered. Mr. Thiagarajan was unable to refer to any book of reference, where “Roji” is mentioned as a surname or a personal name. The Assistant Registrar was of the view-that “Roji” was not a surname or a personal name. Learned Counsel for the appellant was unable to challenge this finding of the Assistant Registrar, but submitted that “Roji” is a close resemblance of the surname Rosie and as such registration of “Roji”” should be prohibited. This contention is raised for the first time during the hearing; of the appeal. It was not suggested before the Assistant Registrar that the word “Roji” is a derivative from Rosie. Nor has this point been raised in the memorandum of grounds. Apart from this objection, I am unable to accept the contention that ” “Roji” is a derivative from the surname Rosie or that it is so closely similar to the word Rosie. The contention that “Roji” is a surname and the registration is in contravention of Section 9(1) cannot, therefore, be accepted.
8. The next contention is that the registration is in contravention of Section 11(a) and 12(1) of the Act. Section 11(a) prohibits the registration of a mark, the use of which would be likely to deceive or cause confusion. Section 12(1) prohibits, the registration of a trade mark in respect of goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in. the name of a different proprietor in respect of the same goods or description of goods. Thus, while Section 12(1) prohibits the registration of a mark, which is identical with or deceptively similar, Section 11(a) prohibits the use of a mark which is likely to deceive or cause confusion. The words deceptively similar are defined in Section 2(d) as follows:
A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles; that other mark as to be likely to deceive or cause confusion.
9. To some extent these two sections cover the same field and there is some overlapping, but they are not identical. In considering the words likely to deceive or cause confusion, Lord Denning in Parker-Knoll, Limited v. Knoll International Limited (1962) R.P.C. 265, 273 observed as follows:
It is not necessary that it should be intended to deceive or intended to cause confusion. You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No doubt if you find that he did intend to deceive or cause confusion, you Will give him credit for success in his intentions. You will not hesitate to hold that his use of it is likely to deceive or cause confusion. But if he had no Such intention, and Was completely honest, then you will look carefully to see whether it is likely to deceive or cause confusion before you find him guilty of infringement.
Secondly ‘to deceive’ is one thing. To ’cause confusion ‘ is another. The difference is this When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true Which is false. You may not do it knowingly, or intentionally; but still you do it, and So you deceive him. But you may cause confusion Without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
10. Thus, a mark will be prohibited whether there is an intention or not to deceive or cause confusion provided the mark is likely to deceive or cause confusion. Confusion may be caused even by telling the truth. Confusion may be caused in the purchaser’s mind through want of knowledge or ability on his past to distinguish. It will have to be considered whether the mark is deceptively similar or is likely to deceive or cause confusion. Whether or not any degree of resemblance likely to deceive or cause confusion exists is a question for the Court to decide Upon evidence in each case. What degree of resemblance is likely to deceive or cause confusion in any instance is incapable of definition, and the observations of judges upon other and quite different facts are usually of little help. The accepted rules of comparison may be stated as follows:
(i) The two words should be taken and both of them should be judged by their look and by their sound; (ii) The goods to Which they are to be applied and the nature and kind of customer who is likely to buy these goods should be considered; (Hi) all the surrounding circumstances and What is likely to happen if each of the marks is used in a normal way as a trade mark for the goods of the respective owners of the marks should also be considered.
11. The marks must be considered as a whole, as the true test is whether the totality of the impression given both orally and visually is such that it is likely to cause mistake, deception or confusion. These three tests may be applied to the present case. The two words may be taken together and judged by their look and by their sound. The words “Raja” and “Roji” do not look alike. They are also not similar by sound. In phonetics they are not the same. It is not likely that “Raja” will be mistaken for “Roji” or vice versa during a conversation in person or over the telephone. Secondly, the goods to which the mark is to be applied and the nature and kind of customer who is likely to buy these goods should be considered. The goods to which the mark is to be applied are the same in both the cases. The kind of customer who is to buy these goods, that is cosmetics, is not likely to mistake one mark for the other, as there is no great similarity between the two marks. Thirdly, taking all the surrounding circumstances if both marks are used in a normal way, it cannot he said that a person is likely to be misled or there will be confusion or deception in the mind of the person, who is likely to buy these goods. Apart from these rules for comparison, several other tests are also prescribed by various decisions. The Supreme Court in Amritdham Pharmacy v. Satyadeo Gupta observed as follows:
The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion… In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered… For deceptive resemblance two important questions are:
(1) Who are the persons whom the resemblance must be likely to deceive or confuse, and
(2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who on seeing a mark thinks that it differs from the mark on goods Which he has previously bought, but is doubtful Whether that impression is not due to imperfect recollection.
Applying these tests it has to be stated that the mark is not likely to deceive or confuse the person, who would ordinarily purchase the goods. A large number of decisions were cited on either side in support of their contentions, where similar words were construed. It is unnecessary to refer to them as the authorities are helpful only in formulating the tests for determining the question whether the mark is likely to deceive or cause confusion. Kerly on Trade Marks, at page 429 (Eighth edition) has given a long list of words that were contrasted in various decisions. As the decisions are based on the facts of each case, they are not helpful in deciding this case.
12. It was next contended on behalf of the respondent that in an application for rectification of the registry the onus is on the applicant to establish his case for rectification, whereas in an application for registration of a trade mark the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In Halsbury’s Laws of England (Third Edition) volume 38 at page 571, the principle is stated as follows:
The principles on which the Court acts in the case of an application to rectify the register on the ground that a mark is not a properly registrable mark are the same as in the case of an application to register. The burden of proof, however, is changed, and it is for the applicant for rectification to show that the mark should not be on the register.
13. In this case the mark of the respondent was registered, and the burden is on the appellant to prove that the mark violated any of the provisions of the Act and should be removed. On a consideration of the facts proved I do riot think the appellant has discharged the onus of proving that there is a likelihood of deception or confusion amongst the purchasers of the goods.
14. It was next contended by the learned Counsel for the respondent that the appellate Court will be loath to interfere with the findings of fact arrived at by the Registrar of Trade Marks. The views of English Courts vary considerably as to when the Registrar’s discretion may be overruled. It is summarised by Halsbury’s Laws of England (Third edition), volume 38 at page 539 as follows:
The Court and the House of Lords have a similar discretion, but are very reluctant to interfere unless the Registrar is clearly wrong.
15. In Union Carbide and Carbon Corporation’s Application to Register a Trade Mark 69 R.P.C. 306, 308 the learned Judge stated the position as follows:
If I were satisfied that in arriving at that decision the Hearing Officer had observed the right approach, having regard to the language of the statute and the guidance given by the decided cases, the mere fact that his conclusion Would not necessarily be that at which I myself Would have arrived without his assistance is no reason Whatever for interfering With his decision. Indeed, I think it would be true to say that, even if I came to the conclusion, as I think I might that his conclusion was fanciful, and indicated failure to appreciate the unsubstantial nature of the objection posed, nonetheless except upon the footing that in exercising his discretion the Hearing Officer had failed to exercise it judicially I should not be justified in interfering With his conclusion.
16. In my view the law expounded by the learned Judge that unless the Hearing Officer had failed to exercise his discretion judicially, even though the conclusion was fanciful, the appellate Court will not interfere may not be applicable to a Court hearing an appeal under Section 109 of the Trade and Merchandise Marks Act, 1958. Section 109 provides that an appeal shall lie to the High Court from any order or decision of the Registrar under the Act or the Rules made thereunder. The appeal is to be heard by a single Judge of the High Court, and the High Court in disposing of an appeal under this section shall have the power to make any order which the Registrar could make under this Act. There is no restriction regarding the power of the High Court in disposing of the appeal. The corresponding section in the English Trade Marks Act, 1938, is Section 52, which provides that in any appeal from the decision of the Registrar, the Court shall have and exercise the same discretionary powers as under this Act or conferred upon the Registrar. Dealing with the contention that the High Court should not lightly interfere with the order of the Registrar, Jagadisan, J., in Appeal Against Order No. 266 of 1961, pointed out that there was no presumption that the Registrar by virtue of his office had experience in the area of trade mark claimed and the law was necessarily right. The learned Judge further stated:
The Registrar of Trade Marks does not occupy a better position than subordinate Civil Court.
17. This perspective of approach was affirmed by the Bench in Chinnikrishnan Chettiar v. Sri Ambal & Company (1964) 2 M.L.J. 206. It was pointed out by the Bench that the duty was that of the Court, and the Court, alone, and it could not shirk that duty by treating the conclusions of the Registrar as sacrosanct unless it could be shown that they were manifestly opposed to law, or erroneous on the face of the record. In view of the decision of the Bench, the English decision may not be applicable in disposing of an appeal under Section 109 of the Act. Learned Counsel for the respondent also referred to some decisions of single Judges of this Court where it was held that the appellate Court will be loath to interfere with the order of the Registrar in appeal. But in view of the decision of the Bench of this Court in Chinnikrishna Chettiar v. Sri Ambal & Company (1964) 2 M.L.J. 206 it is now settled that the power of the appellate Court is not in any way restricted and that the order of the Registrar need not be treated as sacrosanct. The appellate Court will of course take into consideration the view of the Registrar in coming to a decision on appeal. The contention of the learned . Counsel for the respondent that the High Court should not lightly interfere with the order of the Registrar in appeal cannot therefore be accepted.
18. On a consideration of all the facts I agree with the findings of the Registrar that the mark “Roji” is not deceptively similar or likely to deceive or cause confusion amongst the purchasers of the goods. The appeal is dismissed with costs.
