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SC-Dabur India Ltd. Vs. K.R. Industries

Composite Suits, Copyright, and Territorial Jurisdiction: The Supreme Court's Clarification in Dabur India Ltd. v. K.R. Industries

Introduction

In the world of intellectual property litigation, companies often find themselves wanting to fight multiple legal battles in a single lawsuit — seeking protection for their trademark, their copyright, and their product's reputation all at once, ideally in a court that is convenient for them. This desire is natural and understandable, but the law does not always accommodate it. The Supreme Court of India, in its decision dated 16 May 2008 in Dabur India Ltd. v. K.R. Industries, addressed a crucial and practically important question: can a plaintiff combine a copyright infringement claim with a passing off action in a single composite suit and file it in a court that has jurisdiction only over the copyright part of the dispute?

The answer, as the Supreme Court firmly clarified, is no. A court cannot assume jurisdiction over a cause of action simply because it has jurisdiction over another cause of action that has been clubbed together in the same suit. This judgment builds upon and clarifies the earlier landmark ruling in Dhodha House v. S.K. Maingi, and lays down a clear principle that has continuing relevance for intellectual property litigation in India.

Factual and Procedural Background

Dabur India Ltd., one of India's most well-known consumer goods companies, manufactures a product called "Dabur Red Tooth Powder" or "Dabur Lal Dant Manjan." In 1993, Dabur had adopted a distinctive colour combination and arrangement of features for its product packaging. This packaging design was subsequently updated and changed in December 1999.

The new packaging that Dabur adopted in December 1999 had a carefully designed visual identity. It had one column carrying the words "Red Tooth Powder" inside a yellow blurb, with an oval-shaped picture of a family against a yellow background placed just below the blurb. Above these two elements, there was a legend announcing the product as a new pack. An adjacent column repeated the same features in Devnagri script. A third column carried product details such as composition, weight, maximum retail price, and the manufacturer's name. The top half of this third column contained an oval-shaped device with a diagrammatic representation of herbs that form the ingredients of the product.

Dabur claimed that this carton constituted an "artistic work" within the meaning of Section 25-C of the Copyright Act, 1957. A competitor company, K.R. Industries, which manufactures a tooth powder called "Sujata," was alleged to have copied the essential visual features of Dabur's packaging. The allegedly copied features included the use of words "Red Tooth Powder" within a yellow blurb, the representation of a family in an oval-shaped picture, the Devnagri script column, and a floral element similar to Dabur's herbal representation, positioned identically on the packaging.

Dabur filed a suit before the Delhi High Court seeking a permanent injunction restraining K.R. Industries from reproducing its artistic features and from manufacturing, selling, or dealing in tooth powder in packaging that was a slavish imitation of Dabur's product container. The suit combined two legal claims — infringement of copyright under the Copyright Act, 1957, and a passing off action at common law.

K.R. Industries, the respondent, filed an application under Order 7 Rule 11 of the Code of Civil Procedure, 1908 seeking rejection of the plaint on the ground that the defendant is a resident of Andhra Pradesh, and that the Delhi High Court therefore had no territorial jurisdiction to hear the matter. A learned Single Judge of the Delhi High Court accepted this contention on 22 May 2006. Dabur then preferred an intra-court appeal before a Division Bench of the Delhi High Court, which was dismissed, with the Division Bench holding that the matter was squarely covered by the Supreme Court's earlier decision in Dhodha House v. S.K. Maingi. The Division Bench also noted that the Single Judge was correct in holding that the Delhi court had no territorial jurisdiction over the passing off claim since K.R. Industries was based in Andhra Pradesh and there was no documentary evidence of it selling goods in Delhi. Dabur then approached the Supreme Court by way of a Special Leave Petition, which was subsequently converted into a Civil Appeal bearing number 3637 of 2008.

The Dispute

The central legal dispute before the Supreme Court was whether a plaintiff can file a composite suit combining a copyright infringement claim and a passing off action in a court that has jurisdiction over the copyright claim by virtue of Section 62(2) of the Copyright Act, 1957, even though the same court would not have territorial jurisdiction over the passing off action under the general provisions of the Code of Civil Procedure, 1908.

Section 62(2) of the Copyright Act, 1957 is a special provision that gives copyright owners an additional forum for filing suits. Under the general law contained in Section 20 of the Code of Civil Procedure, a plaintiff must file a suit either where the defendant resides or carries on business, or where the cause of action arises. But Section 62(2) gives copyright owners the additional option of filing the suit where the plaintiff himself resides or carries on business — a significant convenience, since copyright infringement often occurs at locations far from where the plaintiff is based.

The passing off action, however, is a common law remedy and does not arise under the Copyright Act, 1957. The Trade Marks Act, 1958, which was the relevant statute when the suit was filed, did not contain any provision equivalent to Section 62(2) giving plaintiffs the option to sue where they reside. The Trade Marks Act, 1999 later introduced such a provision in Section 134(2), but importantly, only for infringement of registered trademarks and related rights — and even that provision does not expressly extend to passing off actions.

Senior Advocate Fali S. Nariman, appearing for Dabur, argued that Section 55(1) of the Copyright Act, 1957 permits a composite suit. That provision states that where copyright in any work has been infringed, the owner shall be entitled to all such remedies by way of injunction, damages, accounts, and "otherwise as are or may be conferred by law for the infringement of a right." The argument was that the phrase "conferred by law" includes not just statute law but also common law, and therefore a passing off action, being a common law right, could be combined with a copyright suit in the same court. Reliance was also placed on the Supreme Court's decision in Exphar Sa and Anr. v. Eupharma Laboratories Ltd. and Anr., reported as MANU/SC/0148/2004, which had broadly interpreted the jurisdiction conferred by Section 62(2).

The respondent's counsel, Mr. Shailen Bhatia, countered that the Supreme Court in Dhodha House v. S.K. Maingi had categorically held that causes of action under the Copyright Act, 1957 and the Trade Marks Act, 1958 are distinct and separate. He further argued that Order II Rule 3 of the Code of Civil Procedure, which allows combination of causes of action, deals only with pecuniary jurisdiction and not territorial jurisdiction, and therefore cannot be used to confer territorial jurisdiction on a court that otherwise does not have it.

Reasoning and Analysis of the Judge

The judgment was delivered by Justice S.B. Sinha on behalf of a Bench comprising himself and Justice L.S. Panta. The Court's reasoning proceeds in a careful and structured manner, drawing upon statutory interpretation, precedent, and first principles of jurisdictional law.

The Court began by examining the provisions of Section 62(2) of the Copyright Act, 1957, which provides the special additional forum for copyright plaintiffs. It noted that this provision was enacted with a specific purpose — to remove impediments for authors and copyright owners who might not be in a position to travel to distant courts where infringement occurred. Parliament consciously inserted this provision in the Copyright Act but deliberately chose not to make a similar provision in the Trade Marks Act, 1958. When Parliament later enacted the Trade Marks Act, 1999, it did introduce an equivalent provision through Section 134(2), but only for suits concerning registered trademarks. Even the 1999 Act does not expressly extend the plaintiff-residency forum to passing off actions. The Court treated Parliament's omission in the 1958 Act as a conscious and deliberate choice, and held that this clearly indicates the legislative intent that no additional forum was meant to be available for passing off actions.

The Court then turned to the question of what Section 55(1) of the Copyright Act, 1957 actually means. This provision entitles the copyright owner to all remedies "as are or may be conferred by law." Dabur had argued that "law" here includes common law, which would bring passing off within the scope of the provision. The Supreme Court rejected this reading. It held that the provision must be read on the principle of ejusdem generis — that is, the general words must take colour and meaning from the specific words that accompany them. The specific remedies mentioned in Section 55(1) are injunction, damages, and accounts. The word "otherwise" at the end of the provision, the Court held, was intended to cover incidental relief — such as taking accounts to quantify damages once copyright infringement is established — and was not intended to import an entirely separate and distinct cause of action arising under a different law.

The Court drew an important analytical distinction between incidental powers and supplemental powers. It noted that where a court has jurisdiction and power to adjudicate a matter, it necessarily also has incidental power to do whatever is reasonably required to make its adjudication effective. In support of this, the Court referred to its earlier decision in Sakiri Vasu v. State of U.P. and Ors., MANU/SC/8179/2007, where it had held that a Magistrate has the power to grant interim maintenance even though Section 125 of the Code of Criminal Procedure, 1973 does not expressly so provide, because that power is incidental to the Magistrate's jurisdiction. Similarly, in Hindustan Lever Ltd. v. Ashok Vishnu Kate, MANU/SC/0077/1996, the Court had held that a Labour Court has the incidental power to grant injunction even without an express provision.

However, the Court was careful to note that incidental power is different from jurisdiction to try an entirely separate cause of action. A court's incidental power allows it to pass orders necessary to make its adjudication effective — for instance, granting an injunction as part of a copyright suit. But it does not extend to trying a wholly different cause of action, based on separate facts and rights, arising under a different law. Passing off is not a remedy that is incidental to copyright infringement — it is an independent cause of action with its own factual requirements and its own legal basis.

The Court revisited its judgment in Dhodha House v. S.K. Maingi, MANU/SC/2524/2005, in some detail. In that case, the Court had been dealing with two High Court judgments — one by the Allahabad High Court in Surendra Kumar Maingi v. Dodha House, MANU/UP/0472/1997, and one by the Delhi High Court in P.M. Diesels Ltd. v. Patel Field Marshal, MANU/DE/0423/1998. In Dhodha House, the Court had clearly held that a judgment passed by a court having no territorial jurisdiction is a nullity. It had also held that the causes of action under the Copyright Act, 1957 and under the Trade Marks Act, 1958 are distinct. Section 62(2) of the 1957 Act provides an additional forum only for copyright claims, not for trademark or passing off claims. The additional forum cannot be used to drag a defendant to a court that otherwise has no jurisdiction over the passing off claim simply because the plaintiff has chosen to combine both claims in the same suit.

The Court noticed that in Dhodha House, one question had been expressly left open — what would happen in a case where the primary cause of action is under the Copyright Act, 1957, and the violation of the Trade Marks Act is only incidental. The Court's observation in paragraph 55 of Dhodha House was that this question was not being decided. The present case gave the Court the opportunity to address this, and it held that even in such a situation, the combining of causes of action does not confer territorial jurisdiction upon a court that does not otherwise have it. Order II Rule 3 of the Code of Civil Procedure, which allows multiple causes of action to be combined in one suit, operates only in the realm of pecuniary jurisdiction. It does not and cannot create territorial jurisdiction where none exists.

The Court also addressed and distinguished the decision in Exphar Sa and Anr. v. Eupharma Laboratories Ltd. and Anr., MANU/SC/0148/2004. In that case, the Court had interpreted Section 62(2) broadly to hold that its purpose is to remove impediments for copyright owners, not to restrict them. The Court in the present case agreed that Section 62(2) confers wider jurisdiction than Section 20 of the Code — but this wider jurisdiction is only for copyright infringement claims. The benefit of Section 62(2) cannot be extended to pull in a separate passing off action that arises from different facts and rights under a different legal framework.

The Court's final articulation of the legal principle is contained in paragraph 29 of the judgment, which deserves close attention. The Court held that a "composite suit" does not entitle a court to entertain a matter over which it has no territorial jurisdiction. A composite suit within the meaning of the Copyright Act, 1957 means a suit that is primarily founded on copyright infringement, and in which the court's incidental power is being invoked to grant connected relief. The composite suit cannot be a device for clubbing together two wholly separate causes of action — one within the court's jurisdiction and another outside it — to drag the defendant to an inconvenient forum.

Final Decision of the Court

The Supreme Court dismissed the appeal filed by Dabur India Ltd. with costs, and directed that the counsel's fee be assessed at Rs. 50,000. The Court upheld the findings of both the learned Single Judge and the Division Bench of the Delhi High Court, holding that the Delhi High Court had no territorial jurisdiction to entertain the passing off claim. The Court found that the Division Bench was correct in holding that the matter was governed by the decision in Dhodha House and that there was no merit in Dabur's argument that the composite suit, combining copyright infringement with passing off, could be maintained before the Delhi High Court on the strength of Section 62(2) of the Copyright Act, 1957.

Point of Law Settled in the Case

This judgment settles two closely related and important points of law.

First, a composite suit combining a copyright infringement claim and a passing off action can only be maintained before a court that independently has territorial jurisdiction over both causes of action. The fact that a court has territorial jurisdiction over one cause of action — the copyright claim — by virtue of Section 62(2) of the Copyright Act, 1957, does not automatically give it jurisdiction over the passing off action. A court cannot assume jurisdiction over a claim merely because another related claim has been brought before it.

Second, Section 55(1) of the Copyright Act, 1957, when it speaks of remedies "as are or may be conferred by law," does not incorporate an independent cause of action such as passing off arising under a different law. The phrase must be read ejusdem generis, restricted to incidental reliefs that are connected to the copyright claim itself, such as accounts and delivery up. It does not extend the court's jurisdiction to try separate and distinct causes of action that arise from independent factual and legal foundations.

Case Details

Title: Dabur India Ltd. v. K.R. Industries

Date of Order: 16 May 2008

Case Number: Civil Appeal No. 3637 of 2008 (Arising out of SLP (C) No. 20941 of 2006)

Neutral Citation: MANU/SC/2244/2008

Equivalent Citations: AIR 2008 SC 3123; (2008) 10 SCC 595; 2008 (37) PTC 332 (SC); MIPR 2008 (2) 215; 2008 (8) SCALE 385

Name of Court: Supreme Court of India

Name of Hon'ble Judges: Justice S.B. Sinha and Justice L.S. Panta

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Headnote

SC-Dabur India Ltd. Vs. K.R. Industries — Supreme Court of India — Civil Appeal No. 3637 of 2008 — Decided on 16 May 2008

Held: A composite suit combining an action for copyright infringement under the Copyright Act, 1957, and an action for passing off, cannot be maintained before a court whose territorial jurisdiction over copyright claims arises solely by virtue of Section 62(2) of the Copyright Act, 1957, if that court independently lacks territorial jurisdiction over the passing off action. Section 55(1) of the Copyright Act, 1957, which entitles a copyright owner to all remedies "as are or may be conferred by law," must be read ejusdem generis and extends only to incidental reliefs connected to the copyright claim. It does not incorporate an independent cause of action such as passing off. Order II Rule 3 of the Code of Civil Procedure, which permits joinder of causes of action, operates in the domain of pecuniary jurisdiction and cannot confer territorial jurisdiction where none exists. A composite suit within the meaning of the Copyright Act, 1957 refers to a suit primarily founded on copyright infringement wherein the court's incidental powers are invoked — it does not permit the clubbing together of wholly distinct and separate causes of action arising from different facts and under different laws merely to bring the defendant before a convenient forum. Appeal dismissed.

SC-Corn Products Refining Co. Vs. Shangrila Food Products Ltd.

Glucovita vs. Gluvita: How a Syllable Shaped Indian Trademark Law — The Landmark Supreme Court Ruling in Corn Products Refining Co. vs. Shangrila Food Products Ltd.

Introduction

In the world of trademarks, even a single syllable can make the difference between a mark being registered and being refused. The case of Corn Products Refining Co. vs. Shangrila Food Products Ltd., decided by the Supreme Court of India on October 8, 1959, is one of the most enduring and frequently cited judgments in Indian trademark law. At its heart, this case asked a deceptively simple question: are the words "Glucovita" and "Gluvita" similar enough to confuse the ordinary buyer in the Indian market? The Supreme Court's answer to this question, and the reasoning it employed to reach that answer, has shaped how Indian courts approach trademark disputes to this day.

This case arose under the Trade Marks Act, 1940, at a time when India's trademark law was still finding its feet as an independent nation. The principles laid down in this judgment — about the reputation of a trademark, about how marks must be assessed from the perspective of a person of average intelligence and imperfect recollection, about the trade connection between different categories of goods, and about the limited value of marks merely appearing on a register — remain alive and relevant in courtrooms across India even today.

Factual and Procedural Background

The appellant, Corn Products Refining Co., was a corporation incorporated under the laws of the State of New Jersey in the United States of America. On August 31, 1942, it had registered the trademark "Glucovita" under the Trade Marks Act, 1940, in Class 30 in respect of "Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient in food; glucose for food." On the same date, the same mark was also registered in Class 5 in respect of "Infants' and invalids' foods." The mark "Glucovita" had thus been on the Indian trademark register for a considerable number of years and had acquired, as events revealed, a significant reputation in the Indian market.

The respondent, Shangrila Food Products Ltd., was a manufacturer of biscuits. On November 5, 1949, it applied for the registration of the trademark "Gluvita" in respect of goods in Class 30. The Registrar of Trade Marks directed that the application be advertised before acceptance, subject to the respondent agreeing to limit the registration to biscuits only, which were one of the several categories of goods within Class 30.

The appellant came forward to oppose this application on two grounds — first, under Section 8(a) of the Trade Marks Act, 1940, which allows refusal of a mark that is likely to deceive or cause confusion, and second, under Section 10(1) of the Act, which deals with marks that are identical or similar to already registered marks used on the same or similar goods. Both parties filed affidavits in support of their respective positions.

The Deputy Registrar of Trade Marks ruled in favour of the respondent. He held that biscuits in Class 30 were not goods of the same description as glucose powder mixed with vitamins, even though both fell within Class 30. On the question of phonetic and visual similarity, he held that the words "Glucovita" and "Gluvita" were not sufficiently similar to cause confusion, relying in particular on the presence of the syllable "co" in the appellant's mark, which he felt was an emphatic characteristic that was unlikely to be overlooked. Applying the test set out in what he called the "Ovax" case — referring to In re: an application by Smith Hayden & Coy. Ld. (1945) 63 R.P.C. 97 — he concluded that the registration could not be refused under Section 8(a).

Aggrieved by this order, the appellant appealed to the High Court at Bombay. The appeal was heard at first instance by Desai, J., exercising the original jurisdiction of that Court. Desai, J., did not press the issue of whether the goods were of the same description and agreed that Section 10(1) did not apply. However, he disagreed with the Deputy Registrar's assessment of the similarity between the two marks. Desai, J., held that the marks "Glucovita" and "Gluvita" were sufficiently similar as to be reasonably likely to cause deception and confusion. He set aside the order of the Deputy Registrar and held that registration of the respondent's mark "Gluvita" must be refused under Section 8(a) of the Act.

The respondent then appealed from the judgment of Desai, J. to a Division Bench of the same High Court, which was heard by Chagla, C.J., and Shah, J. The Division Bench reversed the decision of Desai, J. on two grounds. First, it held that the appellant's trademark had not acquired a reputation among the general public, but only among tradespeople, who were discerning enough not to be confused. Second, it found that there existed in the market a series of trademarks that used the prefixes or suffixes "Gluco" or "Vita," and that this made it impossible to say that those elements were exclusively associated with the appellant's products. On both these grounds, the Division Bench concluded that there was no likelihood of confusion or deception, set aside the order of Desai, J., and restored the order of the Deputy Registrar. It was against this judgment of the Division Bench that the appellant came before the Supreme Court of India.

The Dispute

The dispute, in its essence, revolved around three distinct but interconnected questions. The first was whether the trademark "Glucovita" had acquired a sufficient reputation among the general buying public in India, not merely among traders and businesspersons. The second was whether the marks "Glucovita" and "Gluvita" were so similar as to be likely to cause confusion or deception in the minds of ordinary buyers. The third was whether the presence of several other marks in the register containing the words "Gluco" or "Vita" as prefix or suffix had any bearing on the case, and whether that fact helped the respondent's case for registration.

The stakes of this dispute went beyond the two competing companies. A decision in favour of the respondent would allow a mark closely resembling a well-known brand to enter the market, potentially causing ordinary buyers to believe that "Gluvita" biscuits were made with "Glucovita" glucose or that they originated from the same source. A decision in favour of the appellant would reinforce the protection that trademark law offers to marks that have built up goodwill and public recognition over years of use.

Reasoning and Analysis of the Judge

The Supreme Court delivered its judgment through Sarkar, J., with whom Kapur, J., and Das, J., concurred. The Court addressed each of the three questions methodically and with considerable clarity.

On the Question of Public Reputation

The Division Bench of the High Court had held that the affidavits filed by the appellant used the phrase "Glucovita is a well-known mark in the trade," and had interpreted the words "in the trade" as referring only to tradespeople, not to the general public. The Supreme Court rejected this narrow interpretation. It observed that the expression "in the trade" could equally refer to the public, and that interpreting it to mean only traders was an unduly strict reading.

Beyond this, the Supreme Court pointed to other concrete evidence on the record. The appellant had categorically stated in its opposition that its mark had acquired a reputation among the Indian buying public, and this was not specifically denied in the respondent's counter-statement. The goods under the mark "Glucovita" were sold in small containers of one pound and four ounces capacity. The Supreme Court reasoned that the small size of these containers was itself indicative of retail sale to the general public, because if the sales had been to tradespeople for industrial purposes, they would have been made in bulk or in much larger containers. Furthermore, the appellant had spent considerable amounts on advertising its mark in popular journals, which pointed to a large sale to the general public rather than a restricted trade sale.

Most tellingly, the Court relied on the affidavits filed by the respondent itself. One such affidavit was from K.M. Jamal, a partner in a firm called Pawar and Co., which stated that customers came to the firm to buy both "Gluvita" and "Glucovita" products. Eight other affidavits filed on behalf of the respondent contained similar statements. The Supreme Court observed that this evidence — coming from the respondent's own witnesses — made it perfectly clear that "Glucovita" had acquired a reputation among the general buying public. The Court also noted that the respondent's own grounds of appeal against the judgment of Desai, J., did not dispute the reputation of the appellant's mark and in fact assumed its existence.

The Division Bench had also made what the Supreme Court called a "curious error" in its understanding of what reputation in a trademark means. The Division Bench had said that reputation of a commodity is established only when consumers want the commodity manufactured by a particular manufacturer specifically, and not any commodity of that type. The Supreme Court firmly disagreed with this view. It held that the reputation relevant in trademark law attaches to the trademark itself, not to the manufacturer. What matters is that the public associates the trademark with certain goods. A trademark can have a well-established reputation even if the buyers do not know who the manufacturer of the goods is. This clarification was important because it correctly directed attention to the mark as the identifier of goods, not the maker's identity.

On the Similarity of the Marks

The Deputy Registrar had found the two marks dissimilar primarily because the syllable "co" in "Glucovita" was, in his view, an emphatic characteristic that was unlikely to be slurred over or overlooked. The Division Bench of the High Court had not expressed any view on this question since it decided the case on other grounds.

The Supreme Court sided with the view taken by Desai, J., and departed from the approach of the Deputy Registrar. It emphasized that the question of whether two marks are likely to cause confusion is fundamentally a question of first impression, to be decided by the court itself, and not a question of technical grammatical analysis. Apart from the syllable "co," the two marks "Glucovita" and "Gluvita" were completely identical. The Court observed that for the mass of the Indian population, these were foreign English words, and the average Indian buyer could not reasonably be expected to pick out and emphasize the syllable "co" so clearly as to always distinguish one mark from the other. It is well established in trademark law that marks must be considered as a whole, and when so considered, the Court was of the view that the two marks were indeed similar.

The Court also applied the test of the "idea" conveyed by the marks, relying on the "Aquamatic" case — Harry Reynolds v. Laffeaty's Ld. (1958) R.P.C. 387 — a recent English decision at that time. It observed that both "Glucovita" and "Gluvita" conveyed the same idea, namely, the idea of glucose and the life-giving properties of vitamins. When the same idea is conveyed by two marks, this is a strong pointer towards similarity and the likelihood of confusion. The appropriate standard for testing confusion was stated to be that of a person of average intelligence and imperfect recollection. Such a person, confronted with both marks in the marketplace, would be likely to be confused by the overall structural similarity, the phonetic resemblance, and the common underlying idea of the two marks.

On the Question of Trade Connection Between Different Goods

The respondent argued that even if the marks were similar, there could be no risk of confusion because the goods were different — the appellant sold glucose powder, while the respondent sold biscuits. The Supreme Court rejected this argument as well.

The Court acknowledged that for the purposes of Section 10(1) of the Act, it must be accepted that the goods were not of the same description, since all authorities below had so held and the appellant itself had conceded this position before the Supreme Court. But Section 8(a), which was the operative provision in this case, does not confine itself to goods of the same description. Section 8(a) focuses on the likelihood of deception or confusion in a broader sense.

The Court found that there was evidence of a trade connection between glucose and biscuits. Glucose is used in the manufacture of biscuits. The respondent's own director had told the appellant's manager that the name "Gluvita" was adopted to indicate that glucose was used in the manufacture of the respondent's biscuits. This statement, which was made on behalf of the appellant, was not denied by the respondent. The appellant had also stated that it received an inquiry from a tradesman who asked whether the appellant manufactured biscuits under its "Glucovita" mark, clearly indicating that the tradesman associated the maker of "Glucovita" glucose with potential biscuit manufacture. An average buyer would therefore be quite likely to think that "Gluvita" biscuits were made with the appellant's "Glucovita" glucose.

The Court reinforced this analysis by referring to two important English decisions. The first was the "Black Magic" case — In re: an application by Edward Hack (1940) 58 R.P.C. 91 — where it was held that chocolates and laxatives were trade-connected because laxatives were often made with chocolate coatings, and the similarity of marks was assessed with this trade connection in mind. The second was the "Panda" case — In re: an application by Ladislas Jellinek (1946) 63 R.P.C. 59 — which involved shoes and shoe polishes. The Court noted that shoe polishes are used for shoes, and this trade connection was considered even though the goods themselves were different categories.

The respondent tried to argue that biscuits are made using liquid glucose while the appellant's mark related to glucose powder, and that this distinction eliminated any trade connection. The Supreme Court dismissed this argument by pointing out that there was no evidence that the average buyer was aware of or cared about the distinction between powder glucose and liquid glucose. The ordinary buyer would not be expected to know the technical details of how biscuits are manufactured.

On the Question of the "Series" of Marks

The Division Bench had relied on the principle from Kerly's Law of Trade Marks, 7th Edition, p. 624, to the effect that where there are several marks — registered or unregistered — that share a common feature or syllable, this tends to assist a new applicant whose mark also contains that common element. The Division Bench found a large number of marks on the register containing "Gluco" or "Vita" as prefix or suffix, and concluded on this basis that those elements could not be exclusively associated with the appellant.

The Supreme Court carefully examined the source of this legal principle, tracing it to In re: an application by Beck, Kollar and Company (England) Limited (1947) 64 R.P.C. 76. Reading from the judgment in that case at pages 82 and 83, the Supreme Court extracted the critical distinction that the Division Bench had missed. The principle from Beck, Kollar & Co. makes it clear that the "series" argument — i.e., the argument that a common feature in many marks weakens any one trader's claim to exclusivity in that feature — only applies in opposition proceedings if the series of marks is shown by evidence to be in actual use in the market. The existence of such marks on the register is not sufficient. Registration does not prove use. A mark can be registered without ever being used in the market, and it is impermissible to draw any inference of use merely from the presence of a mark on the register.

The Supreme Court also relied on In re: Harrods' application (1935) 52 R.P.C. 65, which was mentioned in the Beck, Kollar case, to restate the well-recognised principle that where two marks contain a common element that also appears in many other marks in use in the same market, buyers tend to pay closer attention to the other features and distinguish marks by those other features. But this principle, as the Harrods case itself stated, requires that the marks containing the common element be in fairly extensive use in the market in which the competing marks are being used.

In the present case, the respondent had led no evidence of the actual use in the market of marks containing "Gluco" or "Vita." The Deputy Registrar had merely looked at the register and noted the presence of a large number of such marks. The Supreme Court held, relying also on Kerly at page 507 and Willesden Varnish Co. Ltd. v. Young & Marten Ltd. (1922) 39 R.P.C. 285, that the presence of marks on the register does not prove their use and that no inference of use can be drawn from registration alone. The appellant itself had mentioned in one of its affidavits that biscuits bearing marks like "Glucose Biscuits," "Gluco Biscuits," and "Glucoa Lactine Biscuits" were in the market, but the Supreme Court held that these were ordinary dictionary words in which no trader could claim proprietary rights, and they did not constitute a series of marks sharing a distinctive common element. The "series" argument, therefore, failed entirely on the facts.

The Final Decision of the Court

Having found against the respondent on all three grounds, the Supreme Court allowed the appeal. It set aside the order of the Division Bench of the Bombay High Court and restored the order of Desai, J. The registration of the trademark "Gluvita" in favour of the respondent, Shangrila Food Products Ltd., was refused under Section 8(a) of the Trade Marks Act, 1940. The appellant was also awarded costs before the appellate bench of the High Court as well as before the Supreme Court.

Points of Law Settled in the Case

This judgment settled and reinforced several important propositions of law that continue to be cited in trademark matters.

The first and most fundamental point is about the correct approach to assessing the reputation of a trademark. The Court held that reputation in trademark law attaches to the mark, not to the manufacturer. What must be established is that the public associates the mark with certain goods. A buyer's knowledge of who made the goods is irrelevant to this inquiry.

The second point is that the question of whether two marks are likely to cause confusion must be assessed from the standpoint of a person of average intelligence and imperfect recollection. This standard prevents the law from setting an artificially high bar by assuming that all buyers will carefully scrutinize and compare marks side by side.

The third point is that English precedents on phonetic similarity must be applied with caution in the Indian context. The Court acknowledged that the way words are pronounced in England may not reflect the way they are pronounced by the mass of Indian buyers, for whom these English words are essentially foreign. The test of phonetic similarity must be applied as it would work in the actual market where the goods are sold.

The fourth point is that marks must be considered as a whole, not broken down syllable by syllable. The presence of a distinguishing syllable like "co" in one mark does not automatically prevent confusion if, when both marks are looked at as a whole, they remain similar in overall sound, structure, and idea.

The fifth point is about the concept of trade connection between goods of different descriptions. Even when goods are not of the same description and Section 10(1) does not apply, trademark protection can still be invoked under Section 8(a) if there is a trade connection between the goods that would lead the average buyer to assume a connection between the sources of those goods.

The sixth and perhaps most practically significant point is about the evidentiary value of marks on the trademark register. The presence of a mark on the register does not prove that it is being used in the market. In opposition proceedings, the benefit of the "series" argument — which allows an applicant to say that the common feature in its mark is shared by many marks in the market and is therefore not exclusively associated with the opponent — can only be invoked if actual use in the market of those other marks is proved by evidence. Registration alone is insufficient for this purpose.

Case Details

Title: Corn Products Refining Co. Vs. Shangrila Food Products Ltd.

Date of Order: October 8, 1959

Case Number: MANU/SC/0115/1959

Neutral Citation: AIR 1960 SC 142; 1960 (62) BOMLR 162; [1960] 1 SCR 968

Name of Court: Supreme Court of India

Name of Hon'ble Judges: A.K. Sarkar, J.; J.L. Kapur, J.; S.K. Das, J.

Disclaimer: Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Section 8(a) Trade Marks Act 1940: The Glucovita Case That Shaped Indian Trademark Law
Phonetic Similarity in Trademarks: India's Supreme Court Judgment in Corn Products vs. Shangrila
Trademark Registration Refused: Corn Products Refining Co. vs. Shangrila Food Products Ltd. Analysed
Trade Connection Between Goods and Trademark Confusion: The Glucovita Case

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Headnote

The Supreme Court of India, in this appeal arising under the Trade Marks Act, 1940, held that the registration of the mark "Gluvita" applied for by the respondent, a manufacturer of biscuits, was liable to be refused under Section 8(a) of the Act on the ground that it was deceptively similar to the mark "Glucovita" already registered in favour of the appellant in respect of glucose powder mixed with vitamins. The Court reversed the order of the Division Bench of the Bombay High Court and restored the order of the single judge. It was held that the mark "Glucovita" had acquired a reputation among the general buying public in India, as evidenced by the small retail packing of the appellant's goods, its extensive advertising in popular journals, and, most significantly, by affidavits filed by the respondent's own witnesses acknowledging that customers sought both "Gluvita" and "Glucovita" products. The Court further held that reputation in a trademark attaches to the mark itself and does not require buyers to know the identity of the manufacturer. On the question of similarity, the Court held that the two marks must be assessed as a whole from the perspective of a person of average intelligence and imperfect recollection, and that the mere difference of the syllable "co" was insufficient to prevent confusion among Indian buyers, for whom these were essentially foreign words. The Court also upheld the existence of a trade connection between glucose and biscuits, observing that glucose is used in biscuit manufacture and that an average buyer would likely believe that "Gluvita" biscuits were made with the appellant's "Glucovita" glucose. On the "series" marks argument, the Court held that marks appearing on the register cannot be presumed to be in use in the market, and that in opposition proceedings, the benefit of the series argument can only be availed upon proof of actual user of the common-feature marks in the market. Appeal allowed with costs

SC-American Home Products Corporation Vs. Mac Laboratories Pvt. Ltd

Can a Foreign Company Register a Trade Mark It Plans to Use Through an Indian Partner? The 'Dristan' Story

A Detailed Analysis of American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and Another Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney] High Court of Delhi

Trade Mark Trafficking and Bonafide Intention to Use a Registered Trademark : American Home Product Judgement by Supreme Court of India

Introduction

Trade marks are not merely labels or logos. They represent the goodwill, reputation, and consumer trust that a business builds over years of hard work. When a trade mark is registered, the law gives its owner exclusive rights to use it , but only if that owner genuinely intends to use it in relation to the goods for which it is registered. A person who registers a trade mark without any genuine intention to use it perhaps with the idea of selling the registration to someone else for profit , is said to be engaged in what trade mark law calls 'trafficking'. The underlying policy of trade mark law across the world is to prevent such trafficking.

Against this backdrop, the Supreme Court of India in American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and Another [(1986) 1 SCC 465] decided on September 30, 1985, was called upon to address a fascinating and commercially important question: can a foreign multinational company, which does not itself use a trade mark in India but intends to use it through an Indian partner company as a registered user, be said to have had a genuine and bona fide intention to use that trade mark? And if such a foreign company applies for registration of the mark on the basis of that intention, can the mark subsequently be removed from the Register on the ground that there was no bona fide intention to use it at the time of the application?

The Supreme Court's answer to these questions, delivered through a detailed and wide-ranging judgment , has become one of the most important precedents in Indian trade mark law, especially in the context of multinational corporations, registered user arrangements, the legal fiction created by Section 48(2) of the Trade and Merchandise Marks Act, 1958, and the interpretation of Section 46(1)(a) dealing with removal of trade marks from the register on the ground of non-use.

Factual and Procedural Background

American Home Products Corporation, the appellant, is a multinational corporation incorporated under the laws of the State of Delaware in the United States of America. Its pharmaceutical division, called 'Whitehall Laboratories', was engaged in the manufacture and marketing of pharmaceutical products and drugs. In 1956, the appellant introduced an anti-histamine drug in the American market under the trade mark 'Dristan' , a decongestant tablet intended for symptomatic relief of cold, congestion, and other respiratory ailments. The trade mark 'Dristan' was registered in the United States and subsequently, between 1957 and 1961, in approximately 39 other foreign countries.

The appellant held a 40% shareholding in an Indian company called Geoffrey Manners and Co. Ltd. (the Indian Company). As early as December 1957, it was decided that the Indian Company should introduce in the Indian market nine new products of the appellant, including 'Dristan' tablets. On August 18, 1958, the appellant filed an application under Section 14(1) of the Trade Marks Act, 1940 in Form No. TM-I for registration of the trade mark 'Dristan' in class 5 as a medicinal preparation for treatment of respiratory ailments. No notice of opposition was filed by anyone, and the trade mark 'Dristan' was registered as Trade Mark No. 186511 in class 5 on June 8, 1959. The Trade Marks Act, 1940 was replaced by the Trade and Merchandise Marks Act, 1958 with effect from November 25, 1959.

After registration, the Indian Company took several concrete steps. It obtained a licence for purchase of a Stokes Triple Layer Machine, installed it at its Ghatkopar factory on October 5, 1960, obtained samples and the manufacturing manual from the appellant, applied to the Central Government for a manufacturing licence under Section 11 of the Industries (Development and Regulation) Act, 1951 (granted on January 19, 1961), and obtained Drugs Control Administration approval on February 10, 1961.

Meanwhile, on May 31, 1960, Mac Laboratories Private Limited the first respondent applied for registration of the trade mark 'Tristine' in class 5. On January 18, 1961, the appellant filed a notice of opposition. As a counterblast, the first respondent on April 10, 1961 filed Application No. CAL-17 with the Registrar of Trade Marks, Calcutta, for rectifying the Register by removing the appellant's trade mark 'Dristan'.

On October 18, 1961, the appellant and the Indian Company entered into a registered user agreement. The 'Dristan' tablets were first marketed in India on October 22, 1961. On March 6, 1962, both parties jointly applied for registering the Indian Company as registered user of the mark.

On December 7, 1964, the Registrar of Trade Marks, Calcutta dismissed the rectification application. The first respondent appealed; a learned Single Judge of the Calcutta High Court allowed that appeal on May 10, 13, 14, 1968. The appellant's further appeal Appeal 165 of 1968 was dismissed by the Division Bench of the Calcutta High Court on December 16, 1969. It was against this judgment that the present appeal by certificate was filed before the Supreme Court under Article 133(1)(a) and (c) of the Constitution of India.

The Dispute

The central question was whether the trade mark 'Dristan' was liable to be removed from the Register under clause (a) of Section 46(1) of the Trade and Merchandise Marks Act, 1958, on the ground that it was registered without any bona fide intention on the part of the applicant that it should be used in relation to those goods by him, and that there had in fact been no bona fide use of the trade mark by any proprietor up to one month before the date of the rectification application.

The dispute turned on two connected questions. First, whether the appellant at the time of its application on August 18, 1958 had a bona fide intention to use the trade mark and whether an intention to use it through a registered user (the Indian Company) satisfied the requirement of 'intention to use by him'. Second, whether the legal fiction in Section 48(2) of the 1958 Act deeming use by a registered user to be use by the proprietor applied only to cases of actual use, or also extended to the intention limb under Section 18(1) and the first condition of clause (a) of Section 46(1).

Reasoning and Analysis of the Court

The Object of Trade Mark Law and the Meaning of Trafficking

The Supreme Court explained that a trade mark cannot exist in isolation it exists only in connection with the goods in relation to which it is used or intended to be used. Since registration confers very valuable rights, the law cannot permit a person to register a trade mark when he has not used it in relation to the goods or does not genuinely intend to use it. The fundamental object of all trade mark laws is to prevent trafficking in trade marks. The Court accepted the meaning of trafficking from Re American Greetings Corp's Application [(1983) 2 All ER 609] and the House of Lords decision [(1984) 1 All ER 426], per Lord Brightman that trafficking in a trade mark context conveys dealing in a trade mark primarily as a commodity in its own right, not for identifying or promoting merchandise. There must be a real trade connection between the proprietor and the licensee or his goods.

The Two Conditions Under Section 46(1)(a) Are Cumulative

The Court held that both conditions of clause (a) absence of bona fide intention at the time of registration, and no bona fide use up to one month before the rectification application are cumulative and not disjunctive. Both must be satisfied. The reason is to prevent harassment of a legitimate trade mark registrant, since setting up manufacturing and marketing for a new product necessarily takes time. The burden of proving both conditions rests on the person seeking removal from the Register.

Can Proposed Use Through a Registered User Satisfy the Intention Requirement?

This was the central legal question. The Court held that the legal fiction in Section 48(2) is not limited to cases of actual use it applies wherever the word 'use' occurs in any of its permutations and combinations in the Act, including 'proposed to be used by him' in Section 18(1). Carrying the fiction to its logical conclusion as required by the principle in East End Dwellings Co. Ltd. v. Finsbury Borough Council [1952 AC 109], approved by this Court in State of Bombay v. Pandurang Vinayak Chaphalkar [1953 SCR 773; AIR 1953 SC 244] Section 18(1) must be read as 'any person claiming to be the proprietor of a trade mark used or proposed to be used by him or by a registered user'. Any other construction would render the provisions relating to registered users almost meaningless. The Court further held that to avail this fiction, the proprietor must have had in mind at the date of his application some specific person whom he intended to allow to use the trade mark as a registered user otherwise the protection of the fiction is unavailable.

Application to the Facts

The Court found that the continuous chain of events the 40% shareholding in the Indian Company, the collaboration agreement from November 1, 1957, the machinery procurement, manufacturing licence, drug controller approval, samples and manufacturing manual, the registered user agreement dated October 18, 1961, and the first marketing of 'Dristan' tablets on October 22, 1961 established beyond doubt that the appellant had a bona fide intention at the date of its application to use the trade mark 'Dristan' through the Indian Company. There was no trafficking. The first condition of clause (a) was not satisfied.

The 'Pussy Galore' Case and English Decisions Distinguished

The Court held that the Calcutta High Court was unduly impressed by the 'Pussy Galore' Trade Mark case [1967 RPC 265], which was merely a decision of the Board of Trade under the English Trade Marks Act, 1938. The relevant provisions of the English Act are materially different the English Act creates two legal fictions (in Sections 28(2) and 29(2)), while the 1958 Act contains only one (in Section 48(2)). English decisions have persuasive value but applicability must be judged in the context of Indian laws as held in Forasol v. Oil and Natural Gas Commission [(1984) 1 SCR 526; 1984 Supp SCC 263]. A construction leading to manifest absurdity or palpable injustice must also be rejected, as settled in M. Pentiah v. Muddala Veeramallappa [(1961) 2 SCR 295; AIR 1961 SC 1107].

Final Decision of the Court

The Supreme Court allowed the appeal with costs. The judgment of the Division Bench of the Calcutta High Court dated December 16, 1969 was reversed and set aside. Appeal 165 of 1968 filed by the appellant before the Division Bench was allowed with costs. The judgment of the learned Single Judge and the order passed by him were also reversed and set aside. Appeal 61 of 1965 filed by the first respondent before the Single Judge was dismissed with costs. The order of the Registrar of Trade Marks, Calcutta, dismissing the first respondent's rectification application No. CAL-17 with costs was confirmed. The first respondent was directed to pay the costs of the Supreme Court appeal to the appellant.

Points of Law Settled in This Case

The two conditions in clause (a) of Section 46(1) of the Trade and Merchandise Marks Act, 1958 are cumulative both must be proved to remove a trade mark from the Register on that ground. The legal fiction in Section 48(2) applies not only to actual use but also to proposed use under Section 18(1) and the intention limb of clause (a) of Section 46(1). To claim the benefit of this legal fiction, the proprietor must have had a specific person in view as a prospective registered user at the time of the application for registration. Intention to use is a state of mind ascertained from all circumstances, including subsequent events. English decisions under the Trade Marks Act, 1938 are not directly applicable to the 1958 Indian Act owing to material differences in the provisions. A statutory construction leading to absurdity or palpable injustice must be rejected.

Case Title: American Home Products Corporation Vs. Mac Laboratories Pvt. Ltd. and Another

Date of Order: September 30, 1985

Case Number: Civil Appeal No. 2159 of 1970

Neutral Citation: (1986) 1 SCC 465

Name of Court: Supreme Court of India

Hon'ble Judges: Amarendra Nath Sen and D.P. Madon, JJ.

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Can a Foreign Company Register a Trade Mark for Use Through an Indian Registered User? Supreme Court Settles the Law
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Removal of Trade Mark From Register for Non-Use in India: Key Principles Settled by Supreme Court in the Dristan Tablets Case
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Headnote

The Supreme Court of India, held that the two conditions precedent specified in clause (a) of Section 46(1) of the Trade and Merchandise Marks Act, 1958 are cumulative and not disjunctive , both must be satisfied before a registered trade mark can be removed from the Register on that ground, and if either condition is not satisfied, clause (a) will not apply. The Court further held that the legal fiction enacted in Section 48(2) which deems permitted use of a trade mark by a registered user to be use by the registered proprietor applies not only to the second condition of clause (a) relating to actual bona fide use, but also to the first condition relating to bona fide intention at the time of the application for registration under Section 18(1). Accordingly, Section 18(1) must be read as permitting an application for registration of a trade mark 'used or proposed to be used by him or by a registered user'. However, for a proprietor to invoke the benefit of this legal fiction, he must have had in mind at the date of his application for registration some specific person whom he intended to allow to use the trade mark as a registered user. On the facts, the continuous chain of events — the appellant's 40% shareholding in the Indian Company, the technical collaboration agreement effective from November 1, 1957, the machinery procurement, the licences obtained, the samples and manufacturing manual supplied, the registered user agreement of October 18, 1961, and the first marketing of 'Dristan' tablets in India on October 22, 1961 — established beyond doubt that the appellant had a bona fide intention at the date of its application for registration on August 18, 1958 to use the trade mark 'Dristan' through the Indian Company which was to be subsequently registered as its registered user. The first condition of clause (a) of Section 46(1) was therefore not satisfied, and the appeal was allowed with costs. The English 'Pussy Galore' Trade Mark decision [1967 RPC 265] was held inapplicable as the relevant provisions of the English Trade Marks Act, 1938 are materially different from those of the 1958 Act.

SC-Bengal Waterproof Ltd. Vs. Bombay Waterproof Manufacturing Co

For Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Co., here is a detailed law-journal style article in the format requested.

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When a Trade Mark Fights Back: The Story of 'Duck Back' vs 'Dack Back'

A Detailed Analysis of M/s. Bengal Waterproof Limited v. M/s. Bombay Waterproof Manufacturing Company Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Trademark Infringement and Continuous Cause of Action:Bengal Waterproof Vs Bombay Waterproof [DUCK BACK] Judgement by Supreme Court of India

Introduction

Imagine you have built a product over decades, made it a household name, and then someone starts selling a near-identical product with a name so similar that ordinary customers cannot tell the difference. That, in essence, is the story behind the landmark Supreme Court judgment in M/s. Bengal Waterproof Limited v. M/s. Bombay Waterproof Manufacturing Company and Another (Civil Appeal No. 14610 of 1996, decided on 18th November 1996). This case is a vital milestone in Indian trade mark law, not only because it vindicated the rights of a genuine trade mark holder, but also because it clarified two important legal questions that had been causing confusion in courts across India.

The first question was whether a procedural rule under the Code of Civil Procedure, 1908 specifically Order 2 Rule 2 Sub-rule (3) could be used to shut out a trade mark infringement suit simply because an earlier suit on a similar dispute had failed. The second question was whether repeated and continuing acts of trade mark infringement give rise to a fresh cause of action each time they occur, or whether the entire matter becomes closed once a court decides the first case. The Supreme Court answered both questions decisively and in favour of the trade mark owner, restoring justice that had been denied at two earlier stages of litigation.

Factual and Procedural Background

M/s. Bengal Waterproof Limited, the appellant before the Supreme Court, was the registered owner of the trade mark 'DUCK BACK'. This mark had been registered under the Trade and Merchandise Marks Act, 1958, and the company also held copyright registration No. A-4548/69 dated 19th July 1969 in the artistic design of the word 'Duck Back'. The company had built a strong reputation over many years in the Indian market for waterproof goods, particularly rubberised waterproof raincoats, which were well-known to consumers as 'Duck Back' raincoats.

At some point, M/s. Bombay Waterproof Manufacturing Company and another entity began manufacturing and marketing waterproof goods particularly waterproof raincoats under the trade mark 'DACK BACK'. The plaintiff-company came to know that this mark was phonetically and visually so similar to their registered mark 'DUCK BACK' that ordinary consumers were being confused into thinking they were buying the plaintiff's product when they were actually purchasing the defendants' goods. This practice of selling one's goods under a name or mark so similar to another's that customers are misled is legally known as 'passing off'.

Faced with this situation, Bengal Waterproof Limited filed its first suit Original Suit No. 238 of 1980 before the Court of Chief Judge, City Civil Court, Hyderabad. The learned Trial Judge dismissed this first suit on 9th April 1982 on the ground that there was no infringement of the plaintiff's trade mark 'DUCK BACK' by the defendants' use of 'DACK BACK' and therefore the reliefs sought were not maintainable.

The plaintiff took the view that it had been misinformed and ill-advised when it instituted the first suit in the form that it did. Importantly, even after the dismissal of the first suit, the defendants continued selling goods under the name 'DACKBACK'. The plaintiff accordingly issued legal notices two letters dated 30th April 1982 calling upon the defendants to stop marketing or selling goods under that mark. The defendants, by two letters dated 25th May 1982, refused to comply and set up a defence of res judicata.

Undeterred, Bengal Waterproof Limited filed a second suit Original Suit No. 123 of 1982 before the Chief Judge, City Civil Court, Hyderabad, praying for permanent injunctions, delivery up of infringing material, inquiry into damages, and costs. The plaint specifically averred that the cause of action had arisen on or about 6th April 1982 and was a continuing cause of action arising every day within the jurisdiction of the Hyderabad Court.

The defendants raised the bar of Order 2 Rule 2 Sub-rule (3) CPC. The Trial Court dismissed the second suit on this ground. The Andhra Pradesh High Court in CCA No. 112 of 1987, while holding on merits that 'DACK BACK' was phonetically and visually similar to 'DUCK BACK' and amounted to passing off, nevertheless confirmed the dismissal on the procedural bar. Bengal Waterproof Limited then filed a Special Leave Petition under Article 136 of the Constitution of India. Leave was granted and the matter was heard as Civil Appeal No. 14610 of 1996.

The Dispute

The dispute before the Supreme Court was essentially a narrow but crucial one. Since the High Court had already decided the merits in the plaintiff's favour, and since there were no cross-objections or cross-petitions by the defendants, the only question that remained was whether the second suit was barred by Order 2 Rule 2 Sub-rule (3) CPC.

The defendants' counsel fairly conceded before the Supreme Court that if the Court were to hold that the suit was not so barred, the plaintiff's suit would have to be decreed. The entire weight of the litigation thus came down to this single procedural question.

Reasoning and Analysis of the Court

Understanding Order 2 Rule 2 Sub-rule (3) of CPC

The Supreme Court set out the text of Order 2 Rule 2 of the Code of Civil Procedure, 1908. In plain terms, this rule requires that when a person goes to court based on a particular cause of action, he must include all claims and seek all reliefs arising from that cause of action in that single suit. If he omits any relief without obtaining the court's leave, he cannot later file a fresh suit for that omitted relief. The critical foundation of this rule is that both suits must be based on the same cause of action.

The Procedural Bar: Failure to Produce Pleadings of the Earlier Suit

The Supreme Court first identified a fundamental procedural failure on the defendants' part. To invoke this bar successfully, a defendant must produce the plaint of the earlier suit before the trial court so that the court can compare the two plaints and verify that the cause of action is identical.

The Court referred to the authoritative ruling of a Constitution Bench in Gurbux Singh v. Bhooralal (1964) 7 SCR 831, where Justice Ayyangar, speaking for the Constitution Bench, held that for a plea under Order 2 Rule 2(3) CPC to succeed, the defendant must establish: (1) that the second suit is in respect of the same cause of action as the first; (2) that in respect of that cause of action the plaintiff was entitled to more than one relief; and (3) that the plaintiff had, without the court's leave, omitted to sue for the relief now being claimed. The Constitution Bench ruled emphatically that this plea is a technical bar, must be established satisfactorily, and can only be established by filing the earlier plaint as evidence before the trial court.

The defendants had entirely failed to produce the plaint of the first suit (Original Suit No. 238 of 1980) before the Trial Court. In the absence of those pleadings, the plea was simply not maintainable. The attempt to produce the earlier plaint for the first time with the counter-affidavit in the Special Leave Petition was firmly rejected. As the Court observed, the defendants had 'missed the bus' having failed to produce the pleadings before the Trial Court and having made no attempt to do so before the High Court either.

Merits: The Continuing Cause of Action

The Court further held, on merits, that even if the procedural bar were overlooked, the second suit was not based on the same cause of action as the first. The first suit of 1980 covered acts of infringement and passing off up to the date of that suit. The second suit of 1982 was based on fresh, continuing acts of infringement after the dismissal of the first suit acts that were ongoing right through the time of hearing before the Supreme Court, as the defendants' own counsel admitted.

The Court invoked the analogy of a landlord suing for rent: just as a landlord can sue for rent accruing after the first suit even if an earlier suit about earlier rent has been dismissed, a trade mark proprietor can sue for fresh infringement occurring after the first suit.

The Court also applied Section 22 of the Limitation Act, 1963, which provides that in the case of a continuing tort, a fresh period of limitation begins at every moment the tort continues. An act of passing off is a continuing tort an act of deceit in the law of torts. Every fresh sale under the infringing mark is a fresh act of deceit, generating a fresh cause of action. Similarly, infringement of a registered trade mark is a continuing wrong for as long as the infringement persists.

The Court pointedly rejected the argument that an infringer could gain a permanent licence to continue infringing simply because the trade mark owner had once, due to poor legal advice, failed to claim all appropriate reliefs in an earlier suit. Such a result would be manifestly unjust and would defeat the purpose of trade mark protection.

Final Decision of the Court

The Supreme Court allowed the appeal. It set aside the judgments of the Trial Court and the Andhra Pradesh High Court. Original Suit No. 123 of 1982 filed by Bengal Waterproof Limited was decreed as prayed for, with costs throughout all stages of the litigation.

Points of Law Settled in This Case

The judgment confirmed the Constitution Bench ruling in Gurbux Singh v. Bhooralal [(1964) 7 SCR 831] that a plea under Order 2 Rule 2(3) CPC must be established by producing the pleadings of the earlier suit before the trial court. It established that infringement of a registered trade mark is a continuing wrong, and that Section 22 of the Limitation Act, 1963 gives the aggrieved party a fresh cause of action at every moment the infringement continues. It confirmed that passing off is a continuing tort each fresh act of passing off is a fresh cause of action. It held that in cases of continuing or recurring causes of action, Order 2 Rule 2 Sub-rule (3) CPC cannot be invoked. It also affirmed that a phonetically and visually similar mark constitutes actionable trade mark infringement and passing off.

Case Title: Bengal Waterproof Limited Vs Bombay Waterproof Manufacturing Company and Another Date of Order: 18th November 1996

Case Number: Civil Appeal No. 14610 of 1996

Citation: (1997) 1 SCC 99

Name of Court: Supreme Court of India

Hon'ble Judges: Dr. A.S. Anand and S.B. Majmudar, JJ.

Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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Supreme Court on Phonetic Similarity of Trade Marks: The Duck Back Dack Back Dispute Analysed

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Trade Mark Infringement India, Passing Off Law India, Bengal Waterproof Limited, Bombay Waterproof Manufacturing Company, Duck Back Trade Mark, Dack Back Trade Mark, Order 2 Rule 2 CPC, Continuing Cause of Action, Trade and Merchandise Marks Act 1958, Supreme Court of India Trade Mark, Phonetic Similarity Trade Mark, Visual Similarity Trade Mark, Gurbux Singh v Bhooralal, Section 22 Limitation Act 1963, Civil Appeal 14610 of 1996, AIR 1997 SC 1398, 1997 1 SCC 99, Intellectual Property Rights India, Trade Mark Law India, Passing Off Tort India, AdvocateAjayAmitabhSuman, IPAdjutor

Headnote

The Supreme Court of India held that a suit for trade mark infringement and passing off is not barred under Order 2 Rule 2 Sub-rule (3) of the Code of Civil Procedure, 1908 where the second suit is based on a fresh, continuing, and recurring cause of action arising after the first suit. The Court affirmed the Constitution Bench ruling in Gurbux Singh v. Bhooralal [(1964) 7 SCR 831] that a plea under Order 2 Rule 2(3) CPC can only be established if the defendant produces before the trial court the pleadings of the earlier suit, and cannot be founded on inference. The Court further held that infringement of a registered trade mark and acts of passing off are continuing wrongs in the nature of continuing torts, and that Section 22 of the Limitation Act, 1963 operates so as to give the aggrieved party a fresh cause of action at every moment the wrong continues. A mark phonetically and visually similar to a registered trade mark , specifically 'DACKBACK' vis-à-vis the registered mark 'DUCK BACK' , was held to constitute an actionable infringement and an act of passing off entitling the plaintiff to a permanent injunction, delivery up of infringing material, and an inquiry into damages. Appeal allowed with costs.

Wednesday, June 3, 2026

SC-K.R. Chinna Krishna Chettiar Vs Shri Ambal and Co

# Sri Andal vs Sri Ambal: When Sound Speaks Louder Than Sight in Trademark Law

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## Introduction

In the world of trademarks, what you hear can be just as important as what you see. This is the central teaching of the landmark Supreme Court of India decision in K.R. Chinna Krishna Chettiar v. Shri Ambal and Co., Madras, decided on April 14, 1969. The case arose from a seemingly simple dispute between two snuff manufacturers in Madras, each claiming the right to use the name of a Hindu goddess as part of their trade identity. But beneath this simple surface lay a profound legal question: when two marks look different but sound similar, can one be said to deceive buyers into confusing it with the other? The Supreme Court answered with a firm yes, affirming that trademark protection extends to the realm of sound and not just visual appearance. This judgment has since become a foundational reference point in Indian trademark law, particularly on the doctrine of phonetic similarity, and continues to guide courts and trademark practitioners in deciding whether two competing marks are deceptively similar to each other.

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## Factual and Procedural Background

The story begins with two business entities operating in the snuff trade in Madras. The respondent, Shri Ambal and Co., was a partnership firm that had been in the snuff business for several decades. For more than half a century, this firm had been using the word "Ambal" as part of its trade identity. It held two registered trademarks. The first, registered as Trade Mark No. 126808, consisted of a label depicting the goddess Sri Ambal seated on a globe floating on water, enclosed in a circular frame, with the legend "Sri Ambal Parimala Snuff" at the top and the firm's name and address at the bottom. The second, registered as Trade Mark No. 146291, consisted simply of the expression "Sri Ambal" as a word mark.

The appellant, K.R. Chinna Krishna Chettiar, was the sole proprietor of a trading concern called Radha and Co. He too was a manufacturer and dealer in snuff, carrying on business in Madras with activities both within and outside the State. On March 10, 1958, the appellant filed Application No. 183961 for the registration of a trademark in Class 34 in respect of "snuff manufactured in Madras." His proposed mark consisted of a label with three panels. The first and third panels contained the words "Sri Andal Madras Snuff" written in Tamil, Devanagari, Telugu, and Kannada scripts. The centre panel carried a picture of the goddess Sri Andal along with the legend "Sri Andal."

Upon the filing of this application, the respondents filed a notice of opposition. Their main ground of opposition was that the proposed mark was deceptively similar to their registered trademarks, particularly because the word "Andal" was phonetically too close to their trademark word "Ambal."

The Registrar of Trade Marks, who has expert knowledge in such matters, overruled the respondents' objection. He agreed that in a composite mark, the distinctive words play an important part, and that he had to determine whether the expression "Sri Andal" was deceptively similar to "Sri Ambal." However, he concluded that the sound of "Ambal" did not so nearly resemble the sound of "Andal," despite certain letters being common to both, as to be likely to cause confusion or deception among a substantial number of persons. Accordingly, he allowed the appellant's application for registration.

The respondents carried the matter in appeal to the Madras High Court before Justice Jagadishan. The learned Single Judge reversed the Registrar's finding. He observed that it is settled law that a trademark encompasses not merely the picture, design, or symbol but also its descriptive name. He held that the words "Ambal" and "Andal" had such great phonetic similarity that they were virtually indistinguishable in sound and pronunciation. He went further to say that whether the words were uttered slowly or quickly, perfectly or imperfectly, meticulously or carelessly, and whoever uttered them, a foreigner or a native of India, whether in a noisy marketplace or in a calm and secluded area, over the phone or in person, the danger of confusion between the two phonetically allied names was imminent and unavoidable. The Single Judge accordingly allowed the appeal and dismissed the appellant's application for registration.

The appellant then filed a Letters Patent Appeal before the Divisional Bench of the Madras High Court, which too dismissed the appeal, affirming the Single Judge's reasoning. It was also concurrently found by the Registrar and both courts that the appellant had failed to prove honest concurrent use so as to bring his case within Section 12(3) of the Trade and Merchandise Marks Act, 1958. The appellant then approached the Supreme Court of India by way of a special leave petition under Article 136 of the Constitution of India, which was granted, giving rise to Civil Appeal No. 749 of 1966.

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## The Dispute

The legal dispute at its core was about whether the appellant's proposed trademark, built around the word "Andal," was deceptively similar to the respondents' registered trademarks built around the word "Ambal," within the meaning of Section 12(1) of the Trade and Merchandise Marks Act, 1958. Section 12(1) of that Act provides that no trademark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark already registered in the name of a different proprietor in respect of the same goods or description of goods.

The appellant argued that "Sri Andal" and "Sri Ambal" referred to two entirely separate and distinct Hindu goddesses. Sri Andal was a Vaishnavite woman saint of Srivilliputur village, deified because of her union with Lord Ranganatha, while Sri Ambal is the consort of Shiva or Maheshwara. The appellant contended that since the two words conveyed distinctly different religious and cultural ideas, any phonetic resemblance between them was merely accidental and could not reasonably lead to confusion in the minds of consumers.

The respondents, on the other hand, argued that their customers were not all Hindus or all from South India, and that across a diverse population, the distinction between the two goddesses would not be apparent. They maintained that both words, heard by an average person with imperfect memory, sounded virtually identical, and that there was therefore a very real danger of confusion.

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## Reasoning and Analysis of the Judge

The Supreme Court judgment was delivered by Justice R.S. Bachawat, with Justices S.M. Sikri and V. Ramaswami concurring. The Court began by acknowledging that the Registrar of Trade Marks, being an expert, deserved deference, and that his decisions should not be lightly disturbed. However, both the Madras High Court, first the Single Judge and then the Divisional Bench, had found the Registrar clearly wrong. In an appeal under Article 136 of the Constitution, the Court noted, the burden falls on the appellant to show that the concurrent finding of the courts below is erroneous.

The Court then moved to identify the essential and distinguishing feature of each competing mark. It noted that the word "Sri" is a common honorific prefix and is essentially a subsidiary component of the marks. The more distinctive word, the one that fixes itself in the recollection of an average buyer with imperfect memory, is "Ambal" in the respondent's mark and "Andal" in the appellant's proposed mark. This identification of the dominant feature of each mark is critical, because the comparison between marks is always made on the basis of their distinguishing features, not their subsidiary or common elements.

The Court then addressed the vital legal question: if the appellant's mark were used in a normal and fair manner in connection with snuff, and if similarly fair and normal use were assumed of the existing registered marks, would there be such a likelihood of deception that the mark ought not to be allowed to be registered? This framing of the test was drawn from In the matter of Broadhead's Application, reported at (1950) 57 R.P.C. 209, a decision that the Court found instructive. The Court found no doubt that if the proposed mark were used normally, it would come to be known by its distinguishing feature, "Andal," and that there was a striking similarity and affinity of sound between "Andal" and "Ambal."

The Court also addressed the question of visual resemblance squarely. It acknowledged that there was no visual resemblance between the two marks. But it held, in words that have since become axiomatic in Indian trademark jurisprudence, that ocular comparison is not always the decisive test and that the resemblance between two marks must be considered with reference to the ear as well as the eye. This principle firmly established that trademark protection is not purely a matter of visual design but extends to the phonetic dimension, that is, how a mark sounds when spoken.

On the absence of actual confusion in the marketplace, the Court took a pragmatic view. It noted that there was no evidence of actual confusion, but observed that this might be because the appellant's trade was not yet of long standing. The absence of evidence of actual confusion, in other words, was not conclusive in the appellant's favour, particularly when the trade under the proposed mark had not yet matured sufficiently to generate observable instances of confusion.

The Court engaged in a detailed and instructive comparison with the English Privy Council decision in Coca-Cola Company of Canada v. Pepsi Cola Company of Canada Ltd., reported at (1942) 59 R.P.C. 127. In that case, the word "cola" was found to be in common use in Canada for naming beverages, and so the distinguishing feature of "Coca Cola" was "Coca" and not "Cola," while the distinguishing feature of "Pepsi Cola" was "Pepsi" and not "Cola." Since no one would confuse "Pepsi" with "Coca," there was no deceptive similarity. The Court drew a direct analogy: just as "cola" was common, the word "Sri" is common in the present Indian context. The distinguishing feature of the respondent's mark was "Ambal" and that of the appellant's mark was "Andal," and the Court held that these two words were deceptively similar in sound. This Coca-Cola analogy remains a frequently cited illustration of how the dominant feature of a mark is isolated and then compared.

Another important authority considered was De Cordova and Others v. Vick Chemical Company, reported at (1951) 68 R.P.C. 103. In that case, Vick Chemical Company held registered trademarks for the word "Vaporub" and a composite mark incorporating the words "Vicks Vaporub Salve." The defendants had been advertising their ointment as "Karsote Vapour Rub." The Privy Council held that the defendants had infringed the registered marks. Lord Radcliffe articulated the principle that a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features. This principle was applied to reject the argument that using the word "Andal" in conjunction with a pictorial device of the goddess would somehow dilute the phonetic similarity and make confusion less likely. The Court firmly held that the name "Andal" does not cease to be deceptively similar merely because it is used alongside a pictorial device.

The Court then addressed the appellant's most creative argument: that since "Ambal" and "Andal" referred to two distinct goddesses in the Hindu religious tradition, their different meanings would prevent confusion. The appellant relied on the English case of Application by Thomas A. Smith Ltd. to Register a Trade Mark, reported at (1913) 30 R.P.C. 363, where Justice Neville had held that the words "limit" and "summit" were words in common use, each conveying a distinctly definite idea, and that therefore there was no likelihood of confusion. The appellant analogised this to argue that since "Ambal" and "Andal" represented two distinct goddesses, a well-informed Hindu consumer would not confuse one for the other.

The Supreme Court decisively rejected this argument, and its reasoning is perhaps the most socially aware and consumer-protective aspect of the judgment. The Court pointed out that the respondent's customers were not confined to Hindus alone. The respondent's snuff business extended beyond South India, and among its customers were Christians, Parsees, Muslims, and persons of other religious denominations. Many of these customers would have no idea about the theological distinction between a Vaishnavite goddess and a Shaivite deity. Moreover, even Hindu customers from outside South India might not be aware of the distinction. The customers would recall the respondent's goods by the word "Ambal," and they might have a vague recollection of the portrait of a benign goddess associated with the mark. They were not likely to remember the fine religious distinctions between the two deities. The words themselves had no direct reference to the character or quality of snuff, which further meant that consumers had no reason to investigate the precise identity of the goddess depicted. Accordingly, the argument based on distinct meanings was rejected as losing sight of the realities of the marketplace and the actual consumer base.

The Court also briefly addressed the appellant's second application, No. 212575, which sought registration of labels incorporating the expression "Radha's Sri Andal Madras Snuff." The Registrar had disposed of this application in favour of the appellant, and an appeal was pending in the High Court. The Divisional Bench had found force in the argument that there was no phonetic similarity between "Sri Ambal" and "Radha's Sri Andal." However, since the matter was pending before the High Court, the Supreme Court expressed no opinion on it, leaving the question open.

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## Final Decision of the Court

The Supreme Court dismissed the appeal with costs. It affirmed the concurrent findings of both the learned Single Judge and the Divisional Bench of the Madras High Court. The appellant's application for registration of the trademark "Sri Andal" in Class 34 for snuff was refused. The Court held that there was a real danger of confusion between the two marks, that the resemblance between them had to be assessed with reference to both sight and sound, and that the phonetic affinity between "Ambal" and "Andal" rendered the proposed mark deceptively similar to the respondents' registered marks within the meaning of Section 12(1) of the Trade and Merchandise Marks Act, 1958.

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## Point of Law Settled in the Case

This case settled several important principles in Indian trademark law that continue to hold good today. The most significant is that the test of deceptive similarity between two trademarks is not confined to visual comparison alone. Trademark protection extends to phonetic similarity, meaning how a mark sounds when spoken, and a mark that sounds confusingly similar to a registered mark may be refused registration even if it looks visually different. The Court also settled that in assessing similarity, one must identify the dominant or distinguishing feature of each competing mark and compare those features, not the marks as a whole in an undifferentiated manner. Additionally, the Court established that the absence of evidence of actual confusion is not by itself conclusive when the trade in the proposed mark is of short standing. Further, the Court held that the distinctly different meanings of two words do not necessarily save one from being found deceptively similar to the other, particularly where the consumer base is diverse and multilingual, and the word bears no direct descriptive relationship to the goods it is associated with.

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## Case Details

**Title:** K.R. Chinna Krishna Chettiar Vs Shri Ambal and Co., Madras and Anr.

**Date of Order:** April 14, 1969

**Case Number:** Civil Appeal No. 749 of 1966

**Neutral Citation:** MANU/SC/0303/1969

**Equivalent Citations:** AIR 1970 SC 146; 1970 (1) AnWR 21; (1969) 2 SCC 131; [1970] 1 SCR 290

**Name of Court:** Supreme Court of India

**Name of Hon'ble Judges:** Justice R.S. Bachawat, Justice S.M. Sikri, and Justice V. Ramaswami

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*Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.*

**Written By:** Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

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2. Phonetic Similarity in Trademarks: Lessons from K.R. Chinna Krishna Chettiar v. Shri Ambal and Co.

3. When Two Goddess Names Clashed in Court: India's Landmark Trademark Phonetic Similarity Case

4. Deceptive Similarity by Sound: How the Supreme Court Decided the Sri Andal vs Sri Ambal Trademark Dispute

5. Trade Mark Confusion Beyond the Eye: The Sri Andal vs Sri Ambal Case Explained for Everyone

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## Headnote

**K.R. Chinna Krishna Chettiar v. Shri Ambal and Co., Madras and Anr.** — Supreme Court of India — Civil Appeal No. 749 of 1966 — Decided April 14, 1969 — AIR 1970 SC 146

**Held:** In determining whether a proposed trademark is deceptively similar to a registered trademark under Section 12(1) of the Trade and Merchandise Marks Act, 1958, the test is not confined to visual comparison alone. Resemblance between two marks must be assessed with reference to the ear as well as the eye. Where the distinguishing feature of a proposed mark ("Andal") bears close phonetic affinity to the distinguishing feature of a registered mark ("Ambal"), the proposed mark may be refused registration on the ground of deceptive similarity, notwithstanding that the two words represent distinct religious figures and there is no visual resemblance between the composite labels. The absence of evidence of actual confusion is not decisive when the trade in the proposed mark is not of long standing. The diverse and multilingual character of the consumer base is a relevant factor in determining whether a distinctive meaning attached to a word saves it from being found phonetically deceptive.

Friday, June 5, 2026

SC-Dabur India Ltd. Vs. K.R. Industries

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SC-Corn Products Refining Co. Vs. Shangrila Food Products Ltd.

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Wednesday, June 3, 2026

SC-K.R. Chinna Krishna Chettiar Vs Shri Ambal and Co

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