Mount Mettur Pharmaceuticals Limited v. Ortha Pharmaceuticals Corporation

Maharajan, J. 1. This Letters Patent Appeal is directed against the judgment of Ganesan, J. in C. M. A. 278 of 1966 and arises under the following circumstances. The appellant which is the Mount Mettur Pharmaceuticals Ltd., applied to the Assistant Registrar of Trade Marks, Madras, for the registration of its trade mark Utogynol in Part A of the Register in clause 5 in respect of goods which are designated as medicinal preparations. This application was opposed by the respondent, Ortho Pharmaceuticals Corporation, who had registered its trade mark Ortho-Gynol in India in May 1943, in respect of the same type of goods, viz., medicinal preparations. The main ground of the opposition was that the appellants trade mark so nearly resembles the respondents that it is likely to cause confusion and deception within the meaning of Section 12 (1) of the Trade and Merchandise Marks Act, 1958. The Assistant Registrar upheld the respondents objection and refused to register the appellants trade mark. The appeal filed by the appellant against the order of the Assistant Registrar was disposed of by Ganesan, J. It is against the dismissal of the appeal that the present Letters Patent Appeal has been filed. 2. The contest is between the trade name Ortho-Gynol of the 1st respondent and the trade name Utogynol of the appellant. First, we will take the two words and judge them with reference to their look and their sound. Each of those trade names consists of four syllables, the last two of which, Gynol are common. The word Gynol does not appear to be a peculiar invention of the respondent-company. Gyno according to the Concise Oxford Dictionary means ovary. It is a shortened form of Gynaeco, which is derived from a Greek word meaning women. The addition of the letter L to Gyno seems to have been effected in accordance with the trade fashion as exemplified by numerous drugs like Dettol, Glysol, Ferodol etc. In fact, the appellants counsel has filed a list before us containing as many as 61 medicinal preparations manufactured by standard companies ending with the letters OL out of which 44 end with Nol. The expression Gynol cannot therefore be said to be an invention, and consequently, the exclusive property of the first respondent. 3. There being nothing distinctive about the word Gynol we shall examine if there is any similarity between the first two syllables of the two trade names - Ortho-gynol and Utogynol. Orthographically and phonologically .Ortho and Uto are strikingly dissimilar and even making allowances for the mispronunciation of illiterate customers and the illegibility of Doctors prescriptions, we think there is little likelihood of any confusion between these two words. The word Ortho is not an invented word. It is found in the dictionary and is derived from a Greek word. The meaning of this word is straight, rectangular, upright, right, correct etc. on the other hand, the word Uto in the appellants trade mark appears to be an invention. It is not found in the Concise Oxford Dictionary or in the Chamberss Dictionary. But in Websters Third New International Dictionary Uto-aztecan is found and the meaning of it is given as a language phylum comprising the Nahuatlan, Taracahitian, Piman and Shoshonean families. We do not think that the appellant should have borrowed this, word from Uto-aztecan. He must have invented it for the purpose of suggesting uterus, as his medicinal preparation is intended to be used orally as a uterine sedative. Doctors, who prescribe these medicines, can be depended upon to draw the distinction between Ortho-gynol and Uto-gynol. Patients, who resort to these ultramodern medicines, usually belong to the educated class, who can easily distinguish between these two words. The Registrar seems to think that illiterate Indian women may confuse the one with the other. It is difficult to imagine that illiterate Indian women would have the ability to pronounce these startlingly un-Indian words. They would rather rely on their doctors prescriptions than purchase such medicines on their own. 4. Reference has been made by learned counsel for the respondent to judicial pronouncements upon the resemblance between Sri Andal and Sri Ambal (vide C. Krishna Chettiar v. Ambal and Co., AIR 1970 Supreme Court 146) between Thanga Baspam and Thanga Pavun (vide Arumugha Pillai v. Syed Abbas, 1964-1 Mad LJ 151 ); between Lakshmandhara and Amritdhara (vide Amritdhara Pharmacy v. Satya Deo, AIR 1963 Supreme Court 449) and between B. I. Phalogiston and Antiphologistine (vide Bengal Immunity Co. v. D. C. Manufacturing Co., AIR 1959 Calcutta 636). We think that these authorities can give us no real guidance in deciding whether Orthogynol and Utogynol resemble each other in sound and look. We are clearly of the opinion that they do not. We think that a person who knows one of the two trade marks and has an imperfect recollection of the other is not likely to be deceived or confused. 5. As recognised by the Assistant Registrar himself, it is the first two syllables of the word that are most important in the normal enunciation of words the accentuation would be upon the first word Ortho or Uto and not on the second word Gynol. The Registrar says that though this is the most important feature of the two trade names, it is not conclusive because under Indian conditions and Indian way of pronouncing words it is the over-all picture and structure of the words that is most important. We are unable to agree. There is nothing in the Indian way of pronouncing the words which makes for mixing up of such dissimilar, sounding words as Ortho and Uto. We have compared the two words not only syllable for syllable but as a whole, and we think that the total sound effect of the words lacks any similarity. So also when the words are written down and compared, they do not have any similarity, which can deceive the eye of the layman. 6. We may also note that the respondent has failed to adduce any positive evidence that confusion or deception has been actually caused in the Indian market as a result of the alleged resemblance, it is true that the appellants trade name like that of the respondent will be applied to the same kind of goods viz., medicinal preparations. But then the dissimilarity between the two trade names is a sufficient guarantee against the unwary purchaser mistaking the goods of the appellant for those of the respondent. In the civil miscellaneous appeal before the learned Judge the appellant has filed an affidavit in October, 1969. It was filed to meet the objection of the respondent that the appellant may, if his trade mark is registered, use it in respect of medicinal preparations not only in liquid or pill form but also in the form of a jelly, which is the form in which Ortho-gynol is being prepared. In order to obviate this objection the appellant has undertaken that the appellant company will not use the preparation Utogynol except in the form of a liquid or tablet to be taken orally. Learned counsel for the respondent says that in case this court decides to direct registration of Utogynol, the conditions embodied to the affidavit of the appellant may be imposed upon the appellant. We record the undertaking of the appellant and direct registration of Utogynol on condition that the appellant-company shall not use this trade name in respect of any preparation except in the form of a liquid or a tablet to be taken orally. The order of the Assistant Registrar is set aside as he has failed to exercise his discretion judicially, and the judgment of the learned Judge is also reversed as he erred in refusing to set aside the order of the Assistant Registrar. The Letters Patent Appeal is allowed with cost as indicated above. Appeal allowed.