M.P. KENIA, J.

1. Messrs National Chemicals and Colour Company and its two partners are the appellants in this appeal. Messrs Reckitt & Colman of India Limited are the first respondents . Messrs National Chemicals and Colour Company carry on the business, inter alia, of manufacturing and selling colouring material and colours. Reckitt & Colman of India are manufacturers and dealers in Ultra Marine Blue, Colours, etc.

2. Reckitt and Colman are proprietors of registered trade marks in respect of goods falling in classes 1, 2 and 3 of Schedule IV of the Trade and Merchandise Marks Rules, 1959. One of their registered trade marks consists of a picture of a bird sitting on a twig surrounded by a circle with lines in the background, somewhat like the rays of the sun. The trade mark has the words Robin Ultra Marine Blue on it. Another registered trade mark of Reckitt & Colman consists of a bird sitting on a twig.

TRADE MARK

Robin Blue

These trade marks have been registered as far back as 1940 and 1946. These trade marks distinguish the goods of the respondents from similar goods in the market. According to them a typical feature of their trade mark is a bird sitting on a twig.

3. On 26th March, 1971 National Chemicals and Colours Co, the appellants, applied for registration of a trade mark featuring two birds and the words Bul Bul on it. They applied for registration of this trade mark in respect of the goods falling in Class 2 of Schedule IV of the said Rules. The appellants, however, dropped the picture mark which they wanted to register. They obtained registration of only the words Bul Bul. This trade mark was registered in the Trade Mark Journal dated 16th of September, 1973. The trade mark did not contain any device or picture.

4. On or about 11th of May, 1973 the appellants applied for the registration of a trade mark consisting of a device of two birds one partially hiding the other, sitting on a twig with the word Bul Bul written on it. The registration was applied for in respect of goods falling in Class 2 viz., colours. The appellants applied for the registration of this trade mark for the States of Maharashtra, Gujarat, Karnataka, Kerala, Tamil Nadu and the Union Territory of Delhi. The appellants are now willing to restrict the registration further to confine it to specific goods in class 2 namely, colour for use in plastics, paints, printing ink, resins, papers, oils, petroleum products, aluminium foils, polyester films and BOPP films. The trade mark was ordered to be advertised before acceptance. The respondents Reckitt & Colman filed a notice of opposition to this trade mark on 5th of May, 1978. Thereafter they filed their affidavits in support of the opposition. The parties also filed their affidavits of evidence. Ultimately the matter came up for hearing before the Deputy Registrar of Trade Marks, who by his order dated 28th October, 1980 dismissed the opposition of the respondents and permitted the registration of the trade mark applied for by the appellants.

5. The Registrar held that though both the trade marks were in respect of goods of the same description, and though both of them contained the same device of bird or birds sitting on a twig, the written part of the label marks, namely Robin and Bul Bul were different and distinguishable. Hence he held that the two marks were not deceptively similar. He also gave to the appellants the benefit of section 12(3) of the Trade Marks Act, 1968 on the ground that they had used the trade marks honestly and concurrently since 1969. Accordingly he permitted the registration of the appellants trade mark.

6. M/s. Reckitt & Colman who were aggrieved by the decision of the Deputy Registrar filed an appeal under the provisions of the Trade Marks Act, 1958 before this High Court being Misc. Petition No. 52 of 1981. The learned Judge by his judgment and order dated 27th September, 1984 allowed the appeal. He has also held that the trade marks are deceptively similar. He has also held that the appellants mark was likely to deceive or cause confusion. He has also negatived any honest concurrent user of the trade mark by the appellants. As a result he has set aside the judgment and order of the Deputy Registrar of Trade Marks and has dismissed the application of the appellants for registration of their trade mark depicting two birds on a twig and bearing the words Bul Bul. The present appeal is filed from the decision of the learned Single Judge.

7. The trade mark which is sought to be registered by the appellants consists of a picture of two birds sitting on a twig . One bird is partially hidden by the other bird. The words Bul Bul are written on either side of the two birds "Bul" on one side and "Bul" on the other side.

The word mark Bul Bul is already registered. As against this, the registered trade mark of the 1st respondent consists of the picture of a single Bird sitting on a twig with the words Robin Ultra Marine Blue. They also have a registered trade mark consisting simply of the picture of a bird sitting on a twig. The two birds on the proposed trade mark of the appellants are very similar in appearance to the bird in the trade mark of the respondents.

8. Both the trade marks cover goods of the same description because the registered trade marks of the 1st respondents is in respect of goods falling in classes 1, 2 and 3 of Schedule IV while the goods for which appellants are seeking registration of the trade mark are goods falling in class 2.

9. Under section 11(a) of the Trade and Merchandise Marks Act, 1958 a mark, the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark. Under section 12 sub-section (1), save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. It is the case of the 1st respondents that the trade mark now sought to be registered by the appellants is likely to deceive and confuse inasmuch as the trade mark may create an impression that the goods are the goods manufactured by the 1st respondent. They also contend that the trade mark sought to be registered is deceptively similar to their own registered trade mark which also covers goods of the same description. Both these contentions, in our view, have considerable force.

10. In the first place, the picture of a bird sitting on a twig which is registered trade mark of the 1st respondents, is very similar to the picture of two birds sitting on a twig which is proposed to be registered as a trade mark by the appellants. It is true that while the picture mark of the appellants consists of two birds, the picture mark of the respondents consists of only one bird. Nevertheless both the devices bear a close resemblance. One cannot compare two trade marks by putting them side by side and by trying to find out similarities and differences in the two marks. What one has to see is the overall impression which the trade mark gives. Because, this is what members of the public carry in their minds.

11. Kerlys Law of Trade Marks and Trade Names, 12th Edition, paragraph 17-08 states, "Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which have the same mark as that with which he was acquainted."

12. From this point of view of broad similarity, or general impression which the trade marks give, both the trade marks appear to be very similar. A point of distinction which the Deputy Registrar made was that while the one trade mark had the words "Robin" as a part of it, the other trade mark would have the words Bul Bul as a part of it. And these words are different. But, in our view, this makes no difference to the over-all impression which the two trade marks give. We agree with the learned Single Judge that what would normally be retained in mind, after looking at the trade marks, would be the picture of a bird sitting on a twig. Whether the picture carries the legend Bul Bul or Robin does not make much difference to the overall similarity of the two trade marks.

13. In the matter of an application by the Danish Bacom Co. Ltd. to register their trade mark, which is a case reported in 51 R.P.C. page 148, Denish Bacom Co. Ltd. applied for registration of two different device marks, consisting of representations of pigs, one being a picture of a sow and three little pigs in respect of "pig products (for food)" and the other being a picture of three pigs in respect of "bacon and pig products for food". The applications were opposed by John Morrell and Co. Ltd. on the ground that the marks would conflict with their own Trade Marks, one being a picture of three pigs, but quite different from the applicants picture of three pigs, and the other consisting of the words "Three pigs Brand". The Registrar refused to register the marks on the ground that persons might reasonably confuse these marks with the marks of the opponent. This decision of the Registrar was upheld in appeal by the High Court.

14. In the case of (James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.)1, reported in 53 Bom.L.R. 556, the National Sewing Thread Co. Ltd., commenced selling cotton Sewing Thread under a mark which included the figure of a bird perching on a cylinder of cotton sewing thread with its wings fully spread out, with the legend Eagle Brand printed on the mark. This name, the company later changed to Vulture Brand. James Chandwick & Bros. Ltd. were the proprietors of a registered trade mark which consisted of a device of a bird with its wings half opened trying to stand erect on some flat object. Around the device were written the words Eagley Sewing Machine Thread. When the National Sewing Thread Co. Ltd. applied for registration of their mark, it was opposed by James Chadwick & Bros. Ltd. The High Court said that the two marks were likely to confuse and were deceptively similar. The Court accepted that the posture of the bird appearing in the two trade marks was different and so was its spread of wings. But the Court observed, that is hardly the question. The question is whether the bird in the respondents, trade mark is likely to be mistaken by an average man of ordinary intelligence as an eagle, and as we said before, whether, if he asked for Eagle goods and he got goods bearing this trade mark of the respondents, he would reject them saying, " this cannot be an Eagle; I asked for Eagle goods and the bird I see before me is anything but an Eagle". They said that if there is a possibility of a mistake if there is a likelihood that this bird is being mistaken or accepted as an eagle, that possibility is itself sufficient to entitle the Registrar to say that this trade mark is likely to deceive or cause confusion. This reasoning was upheld by the Supreme Court when the case went in appeal before the Supreme Court A.I.R. 1963 S.C.P. 357.

15. In contrast, in the matter of the Application of (La Society Anonyme Dubonnet)2, to register their trade mark , reported in 32 R.P.C. page 241, the Court of Appeal was required to consider two trade marks, with the pictures of cats on them. The Court said that the overall get up of the two trade marks was very distinct. The registered trade mark which was of Boords, well known distillers of worldwide repute for gin, rum and wine, the mark was a cat on top of a barrel with Old Tom across it, the cat being in a militant attitude. This device was very different from a reclining cat with a bottle in front of it which was sought to be registered. The Court said that there was no possibility of any confusion between the label which was proposed to be registered and the Broods mark. One of the conspicuous object in Broods mark was a barrel on which the cat stood in a militant posture. This was absent in the mark sought to be registered, which had a very gentle cat with a bottle in front of it. The Court said that there was no resemblance at all which would lead to any deception.

16. In the case of (F. Hoffimann La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd.)3, reported in A.I.R. 1970 S.C. 2062, the Supreme Court has laid down the test for determining whether one mark is deceptively similar to another. It has held that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. The Supreme Court cited with approval the test formulated by Lord Parkar in (Pinaotist Co. Ltds)4 case, in (1906)23 R.P.C. 774 :

"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. If, considering all those circumstances, you come to the conclusion that there will be a confusion that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case."

This test, which was laid down for word marks applies substantially to devices or picture marks also. Though the visual appearance would naturally be of paramount importance in the case of a picture mark, the other considerations remain valid for determining whether the customer, who is likely to buy the goods to which these marks apply, may be confused as to the goods he is buying.

17. In the present case, in our view, the mark of a bird sitting on a twig is very similar to the mark which is proposed to be registered, which is of two birds sitting on a twig-one of the birds being partially hidden by the other. We agree with the learned Single Judge that the mark proposed to be registered is likely to cause confusion and is also deceptively similar to the registered trade mark of the 1st respondent in respect of the same description of goods.

18. It was urged by the appellants that one must also examine the nature of the trade channels for goods in respect of which the marks are sought to be registered in order to see whether there is a possibility of any confusion. One should also look at the class of customers who are likely to buy these goods. The appellants in this connection pointed out that the trade marks of the 1st respondents were used in connection with laundry blue which could be purchased across the counter, while their colours were designed for industrial use and were not normally sold across the counter. The Deputy Registrar, however has upheld the contention of the 1st respondent that their goods are also for industrial use and not merely for sale across the counter for ordinary customers. Therefore, it cannot be said that the class of customers must be necessarily different.

19. The appellants also point out the difference in the price of the goods of the appellants and the respondents. The goods are not identical. They do not bear comparable prices. But the goods are of the same class. What is more important, there is likelihood of confusion in the minds of customers. The goods manufactured by the appellants may be mistaken for the goods manufactured by the 1st respondents.

20. The 1st respondents have produced material to show that they are well established manufacturers of colours of very long standing. They have substantial sales right from 1940 onwards. While the appellants have started manufacture of colours around the year 1969 or 70. Therefore, the possibility of confusion between the goods of the two manufacturers by virtue of their using trade marks containing similar devices, is very real. In our view, the learned Judge has rightly come to the conclusion that the two marks are deceptively similar and that registration of the device proposed by the appellants is likely to cause confusion.

21. The learned Single Judge has also negatived any honest, concurrent use of the trade mark proposed to be registered by the appellants which would entitle the Registrar to grant registration to this trade mark under section 12(3) of the Trade and Merchandise Marks Act, 1958. In 1971, when the appellants first applied for registration of their trade mark, they applied for registration, both of the picture mark as also of the words Bul Bul. It was, however, pointed out to them by the Registrar of Trade Marks that there were other registered trade marks which contained the picture of a bird on a twig. As a result, the appellants dropped the device of the two birds on a twig and merely applied for registration of the word mark Bul Bul, which registration was granted. It seems that thereafter they continued to use the picture mark for a couple of years. Once again they applied for registration of the picture mark in 1973. The learned Single Judge has rightly held that this cannot be considered as an honest concurrent user. The appellants were aware that there were other similar registered trade marks. Nevertheless they continued to use the same device on their product, presumably in the hope of getting registration at a subsequent date. Such a user cannot be considered as an honest concurrent user under section 12(3). We therefore agree with the learned Single Judge that the benefit of section 12(3) cannot be granted to the appellants.

22. It is also pointed out by the learned Single Judge that there was no evidence before the Deputy Registrar of any honest concurrent user of the picture mark. The appellants had relied upon various invoices for sale of their goods in which the goods were described as "Bul Bul" Brand. The learned Single Judge has rightly come to the conclusion that these invoices do not go to show that the picture mark of two birds sitting on a twig was used on the goods of the appellants which were supplied under the invoices. So on this factual position also the learned Single Judge has disallowed the plea of honest concurrent user, there being no other evidence to show that the picture mark was in fact used on the goods of the appellants since 1969. We do not see any reason to come to a different conclusion.

23. It was next urged that the Registrar had exercised his discretion in granting registration to the appellants mark and that we should not lightly interfere with discretion so exercised by the Registrar. In this present appeal however, the only question which arises is whether the discretion, assuming that it has been exercised by the Registrar, is wrongly exercised; and whether the learned Judge was right in interfering with that discretion. If we come to the conclusion that the learned Single Judge was in error in interfering with the discretion exercised by the Registrar, it would be competent for us to set the matter right. We however, agree with the learned Single judge that the Registrar was clearly wrong in coming to the conclusion that he did reach. It is pointed out by Mr. Tulzapurkar, learned Counsel for the 1st respondent, that the decision of the Registrar was not in the exercise of any discretion. His decision was an adjudication of the question whether the trade mark was likely to deceive or cause confusion. He had to adjudicate whether the proposed mark of the appellant was deceptively similar to the registered trade mark of the 1st respondents. Similarly he had to adjudicate whether there was any honest concurrent user of the proposed mark by the appellants. As the Registrar was not required to exercise any discretion, there is no question of interfering with his discretion. There is much force in this contention. The facts necessary for adjudication which were before the Deputy Registrar were also before the learned Single Judge. He has held that the Additional Registrar was wrong in granting registration. This is clearly a case of adjudication and not a case of an exercise of discretion.

24. Under the Trade and Merchandise Marks Act, 1958, an appeal is provided from the decision of the Registrar. The learned Single Judge, therefore, was entitled to set aside the decision of the Registrar if he came to a conclusion different from that of the Registrar.

25. In the case of (M/s. Hiralal Prabhudas v. M/s. Ganesh Trading Company and other)5, reported in A.I.R. 1984 Bom. page 218 a Division Bench of this Court considered the distinction between adjudication by the Registrar and exercise of discretion by the Registrar. The Court said " The Deputy Registrar did not exercise any discretion under section 66 in rejecting the appellants application for rectification. It must be remembered that the concept of discretion is distinct from that of adjudication. When the Deputy Registrar rejected the appellants application for rectification on the ground that the two marks are not deceptively similar, he did not use any discretion but adjudicated upon the rival contentions of the parties". In the present case also the Deputy Registrar has adjudicated upon the dispute. There is no question of exercising any discretion.

26. There are however, some authorities which say that even if the Registrar has adjudicated upon a dispute, his decision should not be interfered with lightly. In the present case, however, the Registrars decision was clearly wrong. In such a case it is not merely permissible, but is also necessary to set aside his decision in appeal which is expressly provided under the Trade and Merchandise Marks Act, 1958.

27. The learned Single Judge, therefore, was right in setting aside the order of the Registrar. In the premises the present appeal fails and is dismissed with costs.

Appeal dismissed.