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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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
