Kaviraj Pandit Durga Dutt Sharma Vs Navaratna Pharmaceutical Laboratories:Difference between Trademark Infringement and Passing off
Introduction:The case of Kaviraj Pandit Durga Dutt Sharma Vs Navaratna Pharmaceutical Laboratories is a landmark judgment concerning trademark law in India. It highlights the interplay between statutory rights under the Trade Marks Act, 1940, and the common law remedy of passing off. The primary question revolved around whether the appellant’s use of the term "Navaratna" infringed the respondent's registered trademarks. In this case Appellant was the Defendant and Rectification Petitioner against registered Trademark of Respondent while Respondent was Plaintiff and registered proprietor of the mark against which Rectification petition was filed by the Appellant:
Plaintiff/Respondent's Business: Navaratna Pharmaceutical Laboratories, a firm established in 1926 by Dr. Sarvothama Rao, manufactured Ayurvedic medicinal products. The firm initially operated under the name "Navaratna Pharmacy" before changing it to "Navaratna Pharmaceutical Laboratories" in 1945. Trademark Usage: Since inception, the respondent used the term "Navaratna" to identify its products, establishing its reputation in the market. Trademark Registration: In 1928, the respondent declared ownership of the "Navaratna" and "Navaratna Pharmacy" marks with the Registrar of Assurances, Calcutta. Under the Cochin Trade Marks Act, 1944, the respondent registered "Navaratna" (January 31, 1947) and "Navaratna Pharmaceutical Laboratories" (February 17, 1948). These marks were further registered with the Trade Marks Registry in Bombay, as permitted under reciprocal recognition laws (Section 82-A of the Trade Marks Act, 1940).
Defendant/Appellant's Business Activities:Appellant's Business: Kaviraj Pandit Durga Dutt Sharma operated a business manufacturing Ayurvedic pharmaceutical products under the name "Navaratna Kalpa Pharmacy" in Jalandhar, Punjab. Trademark Application: In October 1946, the appellant applied for registration of "Navaratna Kalpa" as a trademark for Ayurvedic preparations. The application was opposed by the respondent, who argued that "Navaratna" was descriptive, lacked distinctiveness, and could not be monopolized. The opposition succeeded, and the registration was refused in 1950.
Initiation of Proceedings:Following the appellant's refusal of registration, both parties initiated legal actions: Respondent's Suit for Infringement and Passing Off: Filed a suit (O.S. No. 233 of 1951) in the District Court, Anjikaimal, seeking: A permanent injunction to restrain the appellant from using "Navaratna" or any similar mark in connection with Ayurvedic products.nProtection of their statutory and common law rights.
Appellant's Application for Rectification: Filed a petition (O.P. No. 19 of 1952) in the High Court of Travancore-Cochin to remove "Navaratna" from the respondent’s registered trademarks, alleging: "Navaratna" was a generic term in Ayurvedic trade and lacked distinctiveness.
District Court's Judgment :The District Court ruled in favor of the respondent, finding: Passing Off: The appellant was not guilty of passing off, as the packaging, get-up, and labels used by both parties were sufficiently distinct to avoid confusion.
Infringement: The word "Navaratna" alone could not be exclusively claimed as it was generic and descriptive in Ayurvedic terminology. However, "Navaratna Pharmaceutical Laboratories" was deemed a valid trademark due to its long and exclusive use by the respondent since before 1937. Relief Granted: The court issued a perpetual injunction against the appellant, limiting it to the use of "Navaratna Pharmaceutical Laboratories."
Appeal to the High Court:The appellant appealed the District Court's decision (A.S. No. 233 of 1959), arguing that: The respondent’s trademark should not have been registered. The findings on passing off and infringement were contradictory. The respondent should disclaim exclusive rights to "Navaratna." The High Court consolidated this appeal with the appellant’s rectification petition (O.P. No. 19 of 1952) and upheld the District Court's judgment.
Appeal to the Supreme Court:Dissatisfied with the High Court's decision, the appellant sought special leave to appeal before the Supreme Court, raising the following concerns: The inconsistency in granting exclusive rights to a descriptive term like "Navaratna." The lack of deceptive similarity between "Navaratna Pharmaceutical Laboratories" and "Navaratna Kalpa." The failure to order a disclaimer under Section 13 of the Trade Marks Act, 1940.The Supreme Court ultimately addressed these issues, providing clarity on acquired distinctiveness, statutory rights, and the distinction between infringement and passing off.
Appellant (Defendant) Submission:Generic Nature of "Navaratna": Argued that "Navaratna" referred to a class of Ayurvedic medicines and was commonly used in the trade. Claimed it lacked distinctiveness and could not be monopolized.No Deceptive Similarity: Asserted that "Navaratna Kalpa" and its packaging were distinct and did not deceive or confuse consumers. Registration Objections: Contended that combining "Navaratna" with descriptive terms like "Pharmaceutical Laboratories" could not confer distinctiveness under Section 6 of the Trade Marks Act, 1940.
Respondent (Plaintiff) Prior Use and Acquired Distinctiveness: Highlighted the continuous use of "Navaratna Pharmaceutical Laboratories" since 1926, creating distinctiveness and goodwill. Trademark Validity: Argued that under Section 6(3) of the Trade Marks Act, 1940, trademarks in use prior to February 25, 1937, could gain registration despite lacking inherent distinctiveness. Deceptive Similarity: Claimed that "Navaratna Kalpa" was visually, phonetically, and conceptually similar, leading to consumer confusion.
Judgments Referred:
India Electric Works Ltd. v. Registrar of Trade Marks, (1949) 49 CWN 425: The Appellant referred to this decision to emphasize that marks could qualify for registration through factual distinctiveness, provided the evidence demonstrated market recognition. The Supreme Court distinguished this case by pointing out that the evidence in India Electric Works did not establish distinctiveness, whereas in the present case, the respondent had uncontroverted evidence of market association.
Citation Discussed: Attorney-General for the Dominion of Canada v. Attorney-General for Ontario, (1897) AC 199:The Supreme Court relied on Lord Watson’s observations that the determination of deceptive similarity is a question of fact requiring judicial analysis of the marks.
Kerly on Trade Marks (8th Edition, p. 407):The Court referred to the principle that in cases involving common elements, marks must be assessed in their entirety, not disregarding shared components.
Citation Discussed: Yorkshire Copper Works Ltd. v. Registrar of Trade Marks, (1954) 71 RPC 150:The Court discussed this case to highlight the distinction between inherent distinctiveness and acquired distinctiveness, rejecting the appellant’s argument that descriptive elements could not gain protection.
Distinction between infringement and Passing Off Action:
Basis of the Legal Remedy: Infringement the Statutory Right: Infringement arises from the violation of a statutory right granted to the registered proprietor of a trademark under Section 21 of the Trade Marks Act, 1940. The essence of an infringement action is the unauthorized use of a registered trademark or a deceptively similar mark for the same or similar goods.Passing Off is Common Law Right: Passing off is a tort rooted in common law, designed to protect the goodwill and reputation of a trader from being misrepresented as associated with another. The claim revolves around preventing one party from passing off their goods or services as those of another.
Key Elements to Prove:In Infringement the plaintiff must establish that:The defendant's mark is either identical to or deceptively similar to the registered trademark. The mark was used in the course of trade for goods or services for which the trademark is registered. No further proof of confusion or deception is required if similarity is evident. In passing Off the plaintiff must prove three elements, commonly known as the "Classical Trinity": Goodwill: The plaintiff has built a reputation in the market for its goods or services. Misrepresentation: The defendant's actions mislead the public into believing that its goods or services are associated with the plaintiff. Damage: The misrepresentation causes harm to the plaintiff’s goodwill or business.
Role of Packaging, Get-Up, and Other Distinguishing Features in Infringement is Irrelevant: The court emphasized that in an infringement action, the focus is solely on the similarity of the marks. Even if the packaging, get-up, or labeling of the defendant’s product clearly distinguishes its origin, the plaintiff's rights under the registered trademark are still violated if the marks are deceptively similar. While in passing Off action, role of get UP is Critical: The defendant can escape liability by showing that the packaging, get-up, and other distinguishing features are sufficiently different to prevent consumer confusion. Factors like the display of the manufacturer’s name and distinct physical characteristics of the goods play a significant role.
Deceptive Similarity:Infringement:Determined by comparing the two marks based on visual, phonetic, and conceptual resemblance. The focus is on whether the defendant's mark is likely to deceive or confuse consumers. The registered proprietor’s statutory right is paramount, and even minor deceptive similarity can result in liability.In assing Off Action, The court evaluates whether the overall presentation of the defendant’s goods is likely to mislead consumers into believing they are purchasing the plaintiff’s goods. Factors beyond the trademark itself, such as packaging and marketing strategies, are considered.
Independent Nature of Claims:
Infringement: A registered trademark owner has an exclusive statutory right, making infringement an independent cause of action.No proof of actual deception is required beyond the similarity of marks.Passing Off: Protects business reputation and consumer trust, requiring proof of actual or potential damage caused by the misrepresentation.
Application in the Case:Infringement: The Court found the appellant's mark "Navaratna Kalpa" deceptively similar to the respondent’s registered trademark "Navaratna Pharmaceutical Laboratories." Despite differences in packaging and labeling, the statutory right to the registered trademark was violated. Passing Off: The respondent’s passing off claim was rejected because the appellant's packaging, labeling, and get-up clearly distinguished its products from those of the respondent. These differences negated the likelihood of consumer deception.
Concluding Note: The Supreme Court clarified that while passing off and infringement may overlap in certain cases, they remain distinct remedies with different requirements. Passing off focuses on protecting market goodwill and consumer trust, whereas infringement safeguards statutory rights associated with registered trademarks, irrespective of external factors like packaging or labeling.
Case Title: Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories
Date of Order: October 20, 1964
Case No.: Civil Appeals Nos. 522 and 523 of 1962
Neutral Citation: AIR 1965 SC 980
Court: Supreme Court of India
Judges: Hon'ble Justice N. Rajagopala Ayyangar, Chief Justice P.B. Gajendragadkar, and Justice J.C. Shah
Advocate Ajay Amitabh Suman,[Patent and Trademark Attorney],High Court of Delhi
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