S. Jagadeesan, Chairman

1. This appeal is directed against the order of the Assistant Registrar of Trade Marks, Delhi dated 4.2.1998. The appellant M/s. GLAXO GROUP LIMITED filed an application No. 495267 for registration of the Trademark VOLMAX in class 5 of Schedule-I of the Trade and Merchandise Marks Act, 1958. The mark is proposed to be used. The first respondent M/s. VOLTAS LIMITED filed their objection contending that the first respondent was using a series of names viz., VOLTAS, VOLFRUIT, VOLFARM, VOLPUMP, VOLDRILL, VOLITA, VOLTRION, VOLDRUM, VOLLAM, VOLRAM, VOLBIT, VOLSEAFOOD, VOLFAN and VOLPHOR. The respondent is doing business as manufacturers/traders in a wide range of goods like air conditioners, water coolers, voltage stabiliser, forklifts, trucks, cranes, switchgear, transformers, pharmaceutical and consumer products, pesticides and insecticides, textile machinery, mining and constructions equipment and machinery etc. The registration of the impugned mark will be contrary to Sections 12(1), 11(a) and 18(1) of the said Act. After considering the plea of both the parties, the Assistant Registrar of Trade Marks, Delhi, in his impugned order upheld the objection of the first, respondent, and consequently rejected the appellants application No. 495267 for registration of the Trademark VOLMAX. We heard the arguments of Shri Sanjay Jain, learned Counsel for the appellant and Shri Amarjit Singh, learned Counsel for the respondent. The learned Counsel for the appellant contented that the respondents house name VOLTAS is totally different from that of the appellants mark VOLMAX. There is a clear distinction between the two marks and as such, there cannot be any confusion in the minds of the purchaser or in the trade. Further, the appellants mark is not distinctively similar to that of the first respondents mark and also the goods are totally different. The learned Counsel for the appellant also placed reliance on the following judgements:-

(1) 2005 (31) PTC 722

(2)

(3) 2005 (31) PTC 174 ( Para 18)

(4) 2002 (25) PTC 747 (Page 755)

(5)

2. On the contrary, the learned Counsel for the respondent contended that as both the appellant as well as the respondent are engaged in the manufacture of pharmaceutical products, the impugned mark and the registered mark of the respondent are deceptively similar and the Assistant Registrar of Trade Marks has rightly held that the impugned mark cannot be registered as it may cause confusion. Further, it is contented that the respondent is using more than fourteen marks having the word VOL as prefix and in such circumstances, the order of the Assistant Registrar of Trade Marks do not suffer from any illegality and hence the appeal is liable to be dismissed, He also relied upon the Judgments reported in 2005 (31) PTC 174 ( Para 19) and .

3. We carefully considered the above contentions of the learned Counsel of either side. The short question arises for consideration is whether the impugned mark VOLMAX is deceptively similar to that of the registered house mark of the first respondent herein viz. VOLTAS and it attracts the prohibition contemplated under Section 11(a) of the Trade and Merchandise Marks Act, 1958. The learned Counsel for the appellant tried to distinguish the marks by pointing out that though the prefix VOL may be the same, the suffix letters MAX in the impugned mark totally make the impugned mark a distinctive one, both phonetically and visually and as such, there may not be any confusion either in the trade or in the minds of the consumers. The first respondents marks is VOLTAS and the suffix letters TAS makes all the difference and there is absolutely no possibility of any confusion. We do not want to burden ourselves by referring to the number of judgements relied upon as each case was decided upon the facts of the particular case. Hence suffice to state the principle laid down in the Judgments of the various High Court and Apex Courts. In order to find out whether the impugned mark could cause confusion, one has to compare the impugned mark with the conflicting mark. To find out the similarity of the marks, the well-laid principle is that we have to approach it from the view point of a man of average intelligence and imperfect recollection. To such a man, the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably or likely to cause confusion between them. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression and it is for the Court to decide that question.

4. To find out the similarity of marks by comparison, it is relevant to refer to the principles laid down by some of the Courts. In Parle Products (P) Ltd. v. J.P. and Co., Mysore wherein the Supreme Court has laid down the underlying principles thus:-

...In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

5. A Division Bench of the Bombay High Court in Hiralal Prabhudas v. Ganesh Trading Company , Honble Mr. Justice Lentin speaking for a Division Bench adverted to the previous decisions of the Supreme Court on the subject and held that the Court must be guided by the following considerations-

What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by the general impressions or by some significant detail rather than by a photographic recollection of the whole (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual an phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design, and (i) overall similarity is sufficient. In addition, indisputably the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.

6. It may also be worthwhile to refer to a passage from Kerleys Law of Trade Marks and Trade Names 13th Edition paras 16-38 at 603:-

When the question arises whether a mark so resembles another mark as to be likely to deceive or cause confusion, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most, of the same elements, as the other, and yet the leading, or it may be the only, impression left on the mind might be very different. On the other hand, a critical comparison of two marks might disclose numerous points of differences, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus, it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken. In the case of device marks, especially, it is helpful before comparing the marks to consider what are the essentials of the claimants device; with word marks, the Court is apt to be more impressed by the dangers of giving the claimant what amounts to a monopoly in a large class of words.

7. Keeping the principles laid down in the above, now we have to compare both the marks of the appellant as well as the respondent. To agree with the contention of the learned Counsel for the appellant that the suffix word makes all the difference and distinguishes the mark of the appellant from that of the first respondent we find the same difficulty. One should not be hard-pressed to make a difference in the mark. The difference must be made out both phonetically and visually just on a mere look at both the marks and on the pronunciation of the same. Here, the appellants mark VOLMAX and the respondents mark VOLTAS, in our view, do not make much difference especially when both are put to use in the pharmaceutical business. One has to be more careful especially on the principles laid down by the Apex Court in in Cadila Health Care Limited v. Cadila Pharmaceuticals Limited, wherein the Apex Court has laid down the following principles for the comparison of the marks well considering the similarity and the confusion of the marks. Judgement of the Apex Court is as follows:-

In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiffs goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no Knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the import tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal product are involved, the test to be applied for adjudging the violation of trademark law may not be on a par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to Judge the possibility of confusion of one medicinal product for another by the consumer. When confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effect. The confusion as to the identity of the product itself could have dire effects on the public health.

On the principles laid down by the Apex Court and the guidelines formulated by the Apex Court, we are of the view that the impugned mark VOLMAX is phonetically, visually or structurally similar to that of the first respondents rival mark, which is in trade much earlier. In view of the same, the registration of the appellants mark would definitely cause confusion not only in the trade but also in the minds of the consumer. Hence, we do not find any infirmity in the order of the Assistant Registrar of Trade Marks, Delhi and the impugned order also do not suffer any illegality. Consequently the appeal fails and is dismissed. However, there is no order as to costs.