Sabyasachi Mukherji, J:

1. This is an appeal under the Trade and Merchandise Marks Act, 1958, from a decision of the learned Deputy Registrar. By the said decision the learned Deputy Registrar has refused the application of the appellant for grant of a trade mark. It appears that the appellant filed an application to register in Part A of the register a trade mark consisting of the word "FORMIS" in Class 3 in respect of `Cosmetics. The application was in due course advertised before acceptance under the proviso to S.20(1) of the Act in the appropriate journal. On 7th June, 1973, Colgate Palmolive of U.S.A.filed a notice of opposition to the application. The said application thereafter came up for hearing before the learned Deputy Registrar. It was contended before the learned Deputy Registrar that the mark in respect of which the appellant was seeking registration was not adapted to distinguish within the meaning of S.9 of the Act on the ground that the trade mark FORMIS was phonetically equivalent to the expression`FOR MISS and as such had a direct reference to the character and quality of the goods. The learned Deputy Registrar has rejected this contention. I am of the opinion that the learned Deputy Registrar was right in rejecting this contention.

2. Thereafter it was contended on behalf of the opponent that under S.11(a) of the Act, the appellant was not entitled to the registration of the mark, as its use was likely to deceive or cause confusion. As mentioned in the decision in the case of Amritdhara Pharmacy v. Satya Deo, AIR 1963 SC 449 [LQ/SC/1962/200] , the Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts and the value of the authorities, lies not so much in the actual decision as in the test applied for determining what is likely to deceive or cause confusion. It is important to remember that the section does not require actual confusion but the likelihood of confusion is the test in guiding this matter. In the case of Re : Pianotist Co.s Application, (1906) 23 RPC 774 Parkar, J. observed as follows at page 777 :

"You must take the two words. You must Judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks."

3. Bearing the aforesaid principles in mind I have to examine whether the two words are likely to cause confusion as held by the learned Deputy Registrar. It is to be noted that both the words contain for common letters viz. `RMIS, While the mark of the appellant was prefaced by the letters "FO", the mark of the respondent was prefaced by the letters `CHA. Apart from this, the other letters are common. They are in respect of similar types of goods, viz. cosmetics and toilet preparation, if not identical. The Deputy Registrar has proceeded on the basis that now-a-days it is common knowledge that cosmetics are used irrespective of class and creed. These are used both by literate and illiterate, rich and poor. Learned counsel on behalf of the appellant urged before me that this was without basis and that the learned Deputy Registrar came to that conclusion without evidence. I am unable to sustain this objection. After all the learned Deputy Registrar was competent to rely on what he called the common knowledge. It is true that now-a-days cosmetics are used irrespective of class and creed and both by literate and illiterate and considering that both the words contain four common letters `RMIS, in my opinion, there was scope for confusion, as was held by the learned Deputy Registrar. However, as is well-known, apparently both the words can be confusing having regard to the stage of development in pronunciation both among the literate and the illiterate. As I have mentioned before, it is not actual confusion but the likelyhood to cause confusion, that is the guiding factor. In view of the type of the goods, the people who use it and the alphabetical use of the words in the two trade marks in my opinion, if a view is taken or conclusion is made that FORMIS is likely to be confused as CHARMIS it cannot be said that such a view was unjustified.

4. There was also a question whether under S.12(1) of the Act the registration should not be granted. Both the marks consist of invented words having no definite meanings. For the reasons mentioned hereinbefore, phonetically the impugned mark is deceptively similar to the opponents trade mark CHARMIS. Therefore, objection under S.12(1) was also sustainable. It is to be noted that the appellant had started using the mark just one month prior to the date of the application and therefore the learned Deputy Registrar held that the appellant was not not entitled to the benefit under S.12(3) of the Act. Section 12(3) of the Act requires concurrent user or other special circumstances. In this case the use for one month in the background of the user for a long period by the respondent of their own mark, in my opinion, cannot be described as concurrent user. There are no other special circumstances indicated in this case. Therefore, S.12(3) was not attracted.

5. In my premises, in my opinion, the decision of the Deputy Registrar cannot be interfered with. The appeal, therefore, fails and is accordingly dismissed. Each party will bear its own costs.