F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd.: The Supreme Court on Deceptive Similarity and Invented Words in Trade Mark Law
Introduction
In the world of trade marks, two of the most frequently contested questions are: when are two marks so similar that one is likely to be confused with the other, and when can a newly coined word claim the status of an "invented word" eligible for trade mark protection? These questions are not merely academic — they determine whether a business gets to keep its trade mark on the register or must surrender it. The Supreme Court of India addressed both these questions with clarity and precision in its landmark decision in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., decided on September 8, 1969. The judgment, delivered by a Bench of Justice J.C. Shah and Justice V. Ramaswami, arose from a rectification proceeding in which a well-known Swiss pharmaceutical company sought the removal of an Indian company's trade mark from the Register of Trade Marks on the ground that it was deceptively similar to its own registered mark. The case remains, to this day, one of the foundational authorities on the test of deceptive similarity between word marks and the meaning of "invented word" under Indian trade mark law.
Factual and Procedural Background
F. Hoffmann-La Roche & Co. Ltd. is a company incorporated under the laws of Switzerland and has been engaged in the manufacture and sale of pharmaceutical and chemical products on a global scale. On December 2, 1946, the company applied for the registration of its trade mark "PROTOVIT" in India. The application was granted and the mark was registered in Class V in respect of pharmaceutical preparations for human use, veterinary use, infants' foods, and invalids' foods. The company had been using this mark on multi-vitamin preparations — both in liquid and tablet forms — and its goods had been sold under that mark at least since the year 1951. The mark "PROTOVIT" had, therefore, built up a reputation and consumer recognition over several years.
Geoffrey Manner & Co. Pvt. Ltd. is a company incorporated in India under the Companies Act and is also engaged in the manufacture and sale of pharmaceutical products. On January 28, 1957 — over a decade after the registration of "PROTOVIT" — Geoffrey Manner applied for registration of its trade mark "DROPOVIT" in respect of medicinal and pharmaceutical preparations and substances. The application was registered. Unfortunately for Hoffmann-La Roche, the advertisement of Geoffrey Manner's application for registration escaped their notice, and they did not oppose it at the time of registration — a step that, had they taken it, could have nipped the dispute in the bud.
It was only by a letter dated March 4, 1958 from Messrs Voltas Ltd. — the agents of Hoffmann-La Roche in India — that the company's attention was drawn to Geoffrey Manner's trade mark "DROPOVIT." Negotiations followed between the parties, but on March 19, 1958, Geoffrey Manner wrote back refusing to alter its trade mark. Having failed to resolve the matter through negotiation, Hoffmann-La Roche filed an application on January 21, 1959 before the Trade Marks Registry for rectification of the Register by removing the trade mark "DROPOVIT." The ground urged was that the mark "DROPOVIT" so nearly resembled the already-registered mark "PROTOVIT" as to be likely to deceive or cause confusion — which is the standard test for deceptive similarity. On March 9, 1960, Hoffmann-La Roche applied for amendment of the rectification application, adding a further ground — that "DROPOVIT" was not an "invented word" and therefore not entitled to registration. This amendment was allowed by the Registrar.
The Joint Registrar of Trade Marks rejected the rectification application on August 5, 1961, holding that "DROPOVIT" was not deceptively similar to "PROTOVIT" and that, taken as a whole, "DROPOVIT" was not a descriptive word. Hoffmann-La Roche appealed to the Bombay High Court. A learned Single Judge, Mr. Justice Tarkunde, dismissed the appeal on December 7, 1962. Hoffmann-La Roche then preferred an appeal under the Letters Patent, which was heard by a Division Bench consisting of Chief Justice Chainani and Justice Mody. This appeal too was dismissed on August 17, 1964. An important development during the hearing before the Division Bench was that Geoffrey Manner restricted the designation of its goods under the mark "DROPOVIT" to "medicinal and pharmaceutical preparations and substances containing principally vitamins." Hoffmann-La Roche then came to the Supreme Court by certificate.
The Dispute
The dispute before the Supreme Court centred on two distinct but connected questions. The first and primary question was whether the trade mark "DROPOVIT" was deceptively similar to the earlier-registered trade mark "PROTOVIT" — that is, whether it so nearly resembled "PROTOVIT" as to be likely to deceive or cause confusion among consumers. This question was governed by Section 12(1) of the Trade and Merchandise Marks Act, 1958 (Act No. 43 of 1958), which prohibits the registration of a trade mark that is identical with or deceptively similar to a trade mark already registered in the name of a different proprietor in respect of the same or descriptive goods. Section 2(1)(d) of the same Act defines "deceptively similar" to mean a mark that so nearly resembles another as to be likely to deceive or cause confusion.
The second question was whether "DROPOVIT" was an "invented word" within the meaning of Section 9(1)(c) of the Act — which is one of the essential particulars required for registration of a trade mark in Part A of the Register — or whether it was merely a combination of common English words and therefore descriptive, disqualifying it from protection as an invented word.
Reasoning and Analysis of the Judges
The Supreme Court began its analysis by setting out the governing legal framework. It noted that even though the application for rectification was filed on January 21, 1959 — before the Trade and Merchandise Marks Act, 1958 came into operation — it was not disputed by either party that by virtue of Section 136(3) of the 1958 Act, the decision of the case was governed by the provisions of that Act. The court then proceeded to consider the two questions in turn.
On the question of deceptive similarity, the court first articulated the fundamental principle: it is not necessary that a mark should be intended to deceive or intended to cause confusion. What matters is the probable effect of the mark on ordinary customers — whether the customers are likely, in the normal course of commerce, to be deceived or confused. The court drew upon a rich body of English trade mark jurisprudence to frame the correct tests.
The court referred to Parker-Knoll Ltd. v. Knoll International Ltd., 1962 RPC 265, where Lord Denning had drawn a clear distinction between "deceiving" a person and "causing confusion." To deceive is to make a false representation — to tell a lie, in effect, whether or not intentionally — that causes someone to believe something false. To cause confusion, however, does not require any false representation at all. A person may be confused without being deceived, simply because they lack the knowledge or ability to distinguish between two true but similar things, or because they do not take the trouble to do so. This distinction is important because the trade mark law is concerned with both forms of mischief.
The court then cited the classic formulation of the test for comparing two word marks, laid down by Lord Parker in Pionotist Co. Ltd.'s Application, 23 RPC 774. According to this test, the two marks must be judged both by their look and by their sound; the nature of the goods to which they are applied must be considered; the kind of customer likely to buy those goods must be assessed; and all surrounding circumstances must be weighed, including what is likely to happen if each mark is used in the normal way for the respective owner's goods. If, considering all these factors, the conclusion is that there will be confusion in the public mind — meaning not necessarily that one trader will be harmed and the other will gain illicit benefit, but that the public will be confused and led to confuse the goods — then registration must be refused.
The court then applied what is known as the visual and phonetic test — that marks must be assessed both for how they look and for how they sound. It referred to the decision of the House of Lords in Aristoc Ltd. v. Rysta Ltd., 62 RPC 65, a case concerning the resemblance between "Aristoc" and "Rysta." Viscount Maugham in that case adopted the exposition of Lord Justice Luxmoore in the Court of Appeal, which the Supreme Court found to be the correct statement of law: the test of resemblance between two marks must not be conducted by meticulous comparison letter by letter and syllable by syllable, as pronounced by a teacher of elocution. The comparison must take into account imperfect recollection, careless pronunciation, and the habits of ordinary buyers and shop assistants. This is because it is the person who knows only one mark and has an imperfect recollection of it — not the person familiar with both marks — who is likely to be deceived or confused.
The court further laid down the important principle that marks must always be compared as wholes. It is wrong to isolate a portion of a word, note that that portion differs from the corresponding portion of the other mark, and then conclude that there is no similarity. The true test is whether the totality of the proposed trade mark is such as to be likely to cause deception or confusion in the minds of persons accustomed to the existing mark. On this point, the court cited Tokalon Ltd. v. Davidson & Co., 32 RPC 133, where Lord Johnston had observed that the comparison is not like a microscopic analysis of letters — it must be from the general and even casual point of view of a customer walking into a shop.
Applying these principles to the two marks "PROTOVIT" and "DROPOVIT," the Supreme Court conducted a careful analysis. Each of the two words consists of eight letters. The last three letters — "VIT" — are common to both. However, the court noted that this common suffix "VIT" is a well-known and widely-used abbreviation in the pharmaceutical trade to denote vitamin preparations. The affidavit of one Frank Murdoch, filed in the proceedings on January 11, 1961, revealed that there were as many as 57 trade marks on the Register of Trade Marks with the common suffix "VIT," all indicating that the goods in question were vitamin preparations. The court concluded that the terminal syllable "VIT" was both descriptive and common to the trade, and therefore lesser weight was to be attached to it when comparing the two marks.
When greater attention is paid to the uncommon elements of the two words — the letters that differ between them — the picture becomes clear. In "DROPOVIT," the uncommon portion comprises the letters "D-R-O-P-O," while in "PROTOVIT," the uncommon portion is "P-R-O-T-O." The court observed that the letters "D" and "P" in "DROPOVIT" and the corresponding letters "P" and "T" in "PROTOVIT" cannot possibly be slurred over in pronunciation — they produce quite distinct sounds. Taking the words as wholes and considering both their visual appearance and their phonetic sound, the court was satisfied that the words were so dissimilar that there was no reasonable probability of confusion between them, either visually or phonetically.
The court also took into account the specific context in which the goods bearing these marks would be purchased. Since both marks were being applied to vitamin preparations — pharmaceutical products — most customers would obtain a prescription from a doctor and present it to a pharmacist or chemist before making a purchase. The court reasoned that in such a situation, except in cases where the doctor's handwriting was very bad or illegible, the chance of confusion was remote. Moreover, given that as many as 57 trade marks on the Register shared the "VIT" suffix, an average customer familiar with vitamin products would naturally exercise greater care and attention when purchasing such goods, knowing that the "VIT" suffix appears in a large number of trade marks.
An additional factor reinforcing this conclusion was the regulatory framework under the Drug Rules, 1945. Under Rule 61(2) of those Rules, vitamin preparations fall under item 5 in Schedule C-(1), and a licence is required to stock and retail such preparations. This means that the goods bearing either of the two rival trade marks would be sold only by licensed dealers — not at any general shop. The court held that this fact of the seller being a licensed dealer further reduced the possibility of confusion to a considerable extent, since a licensed pharmacist would be expected to know the difference between "PROTOVIT" and "DROPOVIT."
Weighing all these circumstances together — the dissimilarity in the uncommon parts of the two words, the descriptive and common nature of the "VIT" suffix, the prescription-based purchase of such products, the prevalence of "VIT"-suffixed trade marks in the pharmaceutical register, and the requirement of a licensed dealer for sale — the court concluded that there was no real, tangible danger of confusion if "DROPOVIT" was allowed to continue on the Register. The Joint Registrar of Trade Marks and the Bombay High Court were both right in dismissing the rectification application on this ground.
The court then turned to the second question — whether "DROPOVIT" was an "invented word." Section 9(1)(c) of the Trade and Merchandise Marks Act, 1958 provides that a trade mark is eligible for registration in Part A of the Register if it contains or consists of one or more invented words. Hoffmann-La Roche argued that "DROPOVIT" was nothing more than a combination of three ordinary English words — "DROP," "OF" (with "of" misspelled as "o"), and "VIT" (shorthand for "Vitamins") — joined together. The argument was that "DROPOVIT" simply meant "Drop of Vitamins" and was therefore not an invented word but a descriptive combination of common words.
To determine what constitutes an "invented word," the court turned to the celebrated Diabolo case, 25 RPC 565, where Parker J. had explained that to be an invented word within the meaning of the Act, a word must not only be newly coined — in the sense of not being already current in the English language — but must also be such that it does not convey any meaning, or at least any obvious meaning, to ordinary English-speaking persons. It must be a word that has no meaning or no obvious meaning until a meaning has been assigned to it. The Privy Council in De Cordova and Others v. Vick Chemical Co., 68 RPC 103 had described this formulation by Parker J. as "the best standing interpretation," and the Supreme Court adopted it.
The court then asked whether the word "DROPOVIT" would strike an ordinary English-speaking person as meaning "Drop of Vitamin." In addressing this, the court made a telling observation: the original rectification application filed by Hoffmann-La Roche on January 21, 1959 did not contain the ground that "DROPOVIT" was descriptive. This ground was added only by amendment on March 9, 1960 — more than a year later. The court drew the inference that the word "DROPOVIT" had not struck even the legal advisers of Hoffmann-La Roche — Messrs Depenning and De-Penning, who were experienced attorneys — as being descriptive when they first filed the application. Further, Mr. Justice Tarkunde himself had remarked, at the hearing before the Single Judge, that when the case was first opened before him, he did not understand that "DROPOVIT" meant "Drop of Vitamin" until the explanation was given to him. These two facts — that experienced lawyers did not initially perceive the word as descriptive, and that even a learned judge did not spontaneously understand its purported meaning — powerfully supported the conclusion that "DROPOVIT" did not, as a matter of first impression, convey any obvious meaning to ordinary persons.
The court acknowledged that "DROPOVIT" had been coined out of words commonly used by and known to ordinary English-speaking persons. But the critical point was that the resulting combination produced a new, newly coined word that did not remind an ordinary person of the original component words — unless they were specifically told of the derivation or unless they devoted deliberate thought to it. This is precisely the kind of word that qualifies as an "invented word." The court therefore held that "DROPOVIT" was an invented word, entitled to be registered as a trade mark, and was not liable to be removed from the Register.
Final Decision of the Court
The Supreme Court dismissed the appeal with costs. The court upheld the findings of the Joint Registrar of Trade Marks and the Bombay High Court (both the Single Judge and the Division Bench), confirming that "DROPOVIT" was neither deceptively similar to "PROTOVIT" nor a non-invented descriptive word. The trade mark "DROPOVIT" was held entitled to remain on the Register of Trade Marks, limited to medicinal and pharmaceutical preparations and substances containing principally vitamins — the restriction voluntarily offered by Geoffrey Manner before the Division Bench of the Bombay High Court.
Point of Law Settled
This judgment settled several important points of trade mark law. First, the test for deceptive similarity between two word marks is not a microscopic, letter-by-letter comparison but a holistic assessment — the marks must be compared as wholes, from the visual and phonetic point of view, having regard to the probable effect on ordinary consumers with imperfect recollection. Second, elements that are descriptive and common to the trade — such as the suffix "VIT" for vitamin preparations — carry lesser weight in the comparison and must not be allowed to dominate the analysis. Third, the nature of the goods and the manner of their purchase — such as sale through licensed pharmacists on prescription — are highly relevant factors in assessing the likelihood of confusion. Fourth, an invented word need not be completely meaningless; it suffices if the word, as a newly coined combination, does not convey any obvious meaning to ordinary persons at first impression. If the resulting combination does not readily remind an ordinary person of the component words from which it is formed unless they think hard about it or are told, the word qualifies as an invented word under Section 9(1)(c) of the Trade and Merchandise Marks Act, 1958.
Case Details
Title: F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. Pvt. Ltd.
Date of Order: September 8, 1969
Case Number: Civil Appeal No. 1330 of 1966
Neutral Citation: MANU/SC/0302/1969; Equivalent Citations: AIR 1970 SC 2062; (1969) 2 SCC 716; [1970] 2 SCR 213; 1982 (2) PTC 335 (SC); 1971 (73) BOMLR 119; 1971 MhLJ 354
Name of Court: Supreme Court of India
Name of Hon'ble Judges: Justice J.C. Shah and Justice V. Ramaswami
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
The Supreme Court of India, in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., Civil Appeal No. 1330 of 1966, decided on September 8, 1969, reported at AIR 1970 SC 2062 and (1969) 2 SCC 716, held that the trade mark "DROPOVIT" was neither deceptively similar to the registered trade mark "PROTOVIT" nor a non-invented descriptive word, and accordingly dismissed the rectification application. The court laid down that the test of deceptive similarity requires a holistic comparison of two marks — both visually and phonetically — taking into account the probable effect on ordinary consumers with imperfect recollection, the nature and class of goods, the mode of purchase, and the regulatory environment. Elements that are descriptive and common to the trade must receive lesser weight in the comparison. Since the suffix "VIT" appeared in as many as 57 registered trade marks for vitamin preparations and was thus common to the pharmaceutical trade, the comparison between "PROTOVIT" and "DROPOVIT" had to focus on the dissimilar elements, which were found to be clearly distinct both in appearance and sound. The court further held that a word qualifies as an "invented word" under Section 9(1)(c) of the Trade and Merchandise Marks Act, 1958 if, as a newly coined combination, it does not convey any obvious meaning to an ordinary English-speaking person at first impression — even if it is composed of common English words — so long as the composite word does not readily reveal its component parts without deliberate thought. The appeal was dismissed with costs.
