H. Suresh, J:

The petitioners are the proprietors of the Trade Mark consisting of the word Hepax in respect of pharmaceutical preparations containing liver extract as also in respect of medicinal preparations the petitioners were using the said Trade Mark in respect of allopathic medicinal preparations in an injectiable form from 1947 upto 1950-51. In or about the year 1976, the petitioners again started using the said Trade Mark in respect of an ayurvedic medicinal preparation for hepatic disorders in the form of syrup and tablets. Since then the petitioners have been regularly and extensively using the said Trade Mark in respect of ayurvedic medicinal preparations. The petitioners have registered the said Trade Mark under the provisions of the Trade & Merchandise Marks Act, 1958 under No. 128854 as of 16th April 1947 and under No. 322508 as of 28th July 1977, both in class 5. The said registration is still subsisting.

The 1st respondent has recently started using the Trade Mark "Hepasyp" in respect of an ayurvedic medicine and they made an application for registration of the Trade Mark "Hepasyp". The petitioners filed a notice of opposition on 2nd February 1984 on the ground that the registration of the 1st respondents Marks is prohibited under the provision of Section 9, 11, 12 and 18 of the Trade & Merchandise Marks Act, 1958, the Joint Registrar of Trade Marks, by his order dated 26th May 1986, refused the petitioner opposition and allowed the 1st respondents application with costs. This appeal has been filed against the said decision dated 26th May 1986.

Before the Joint Registrar of Trade Marks, the matter proceeded ex parte and the petitioner were absent. He came to the conclusion that the respondents Mark is prima facie capable of distinguishing and is registrable under Section 9 of the Act. He also came to the conclusion that there is no likelihood of confusion and that respondents is entitled to the registration of the Trade Mark and the objection under Section 12(1) of the Act could not be sustained. So also he held that the petition under section 11 also would not survive. Similarly, he rejected the petitioners objection under Section 18 of the Act.

The Joint Registrar of Trade Mark took note of the fact that there was no doubt that both the goods are of the same description. He further took note of the fact that both the Marks have the prefix "HEPA" and that the prefix "HEPA" is common to the Trade, it being a purely descriptive term. He further took note of the fact that the term "HEPA" is commonly used in the Trade by several manufacturers and he has mentioned some of the names in the order in respect of pharmaceutical preparation.

Before me there is no controversy that the concerned goods are ayurvedic medicinal and that they are easily available across the counter without a doctors prescription and are consumed by all classes of people. Similarly, there is no dispute abut the fact that the respondent No. 1 had first made an application on 24th September 1980 for registration of the Trade Mark "HAPASYP" in respect of an ayurvedic medicine being application No. 366579B. This was advertised on 16th January 1984 and soon thereafter on 2nd February 1984 the Petitioners had filed their notice of opposition. But in 1981 when the petitioners came to learn that the respondent had introduced ayurvedic medicinal preparations under the Trade Mark "HEPASYRUP-79" they had objected to the same. The 1st respondent did not give a reply. He also, however, did not comply with the petitioners request not to use the said Mark. But it is clear that from about August 1982 the respondent started using the said Trade Mark "HEPASYRUP-72". To this also, the petitioners had objected.

Mr. Tulzapurkar submitted that there are three fundamental errors in the order, firstly he submitted that the opposition under Section 9 of the Act is wrongly disallowed on the ground that the Mark is distinctive. Secondly, he submitted that the Registrars conclusion that the marks are dissimilar is erroneous. Thirdly, he submitted that the Joint Registrar could not have relied on the plea of common use as there was no evidence of extensive use of such a Mark by others, he submitted that there is every likelihood of deception or confusion amongst the consumers and that the 1st respondent has deliberately copied the petitioners Mark, there being no doubt about the reputation of the petitioners with regard to the said Mark of the petitioners.

Mr. Tulzapukar has submitted that the respondents Mark is a mere combination of two descriptive word "HEPA" and "SYP" and as such is not registrable under Section 9 of the Act. There is no dispute that the expression "HEPA" is purely a descriptive term. In fact, Mr. Desai, in this connection, drew my attention to the Chambers Dictionary to suggest the meaning of the word "HEPA". Undoubtedly, the etymological meaning is that the word pertain to "LIVER" he also referred to the Indian Pharmaceutical Guide 1985 to say that there are a number of products with the terms "HEPA" forming first past of the word, perhaps all relation to medicines for ailment connected with liver. The only limited question is whether it could be said that the expression "SYP" can be said to be a word invented by the respondent.

Mr. Desai, in this connection relied on the case of Roche & Co. v. G. Manner & Co. A.I.R. 1970 Supreme Court, 2062. In that case, the Trade Mark involved was "DROPOVIT. The Supreme Court came to the conclusion that this is not a descriptive word and therefore, the word was held to be an invented word. The Supreme Court also took note of the fact that the word "DROPOVIT" is coined out of words known to ordinary persons knowing English. But the resultant combination produced a newly coined word "which does not remind an ordinary person knowing English of the original words out of which it is coined unless he is so told or unless at least he devote some thought to it".

But I think the legal position is well settled. There is a reference in that very judgement to a passage from Parkar J. Diabolos case, (1908) 25 RPC 265 and it is as follows:

"To be an invented word within the meaning of the Act a word must not only be newly coined, in the sense of not being already current in the English language, but must be such as not to convey any meaning, or, at any rate, any obvious meaning to ordinary Englishman. It must be a world having no meaning or no obvious meaning until one has been assigned to it".

The Registrar of Trade Marks held that the respondents Mark "HEPASYP" being not a surname, a personal name or a geographical name of a work having any direct reference to the character or quality of the goods, viz. ayurvedic medicine and being a word have no meaning or at any rate any obvious meaning, the objection raised under Section 9 cannot be sustained. I am unable to agree with the conclusion of the registrar of Trade Marks. In my view, the word "SYP" would clearly indicate "syrup" having regard to the goods that is being sold, namely, syrup. Thus, the word "HEPASYP" read as whole name would at once convey an obvious meaning to an ordinary English man that the goods sold it a syrup for the liver ailment. If that is so, in my view, the learned Registrar was clearly in the error in rejecting this objection raised by the petitioners.

This takes me to the other contention, namely, the respondents Mark can be said to be deceptively similar to a Trade Mark which is also registered in the name of a different proprietor in respect of the same goods or description of the goods or in any event it is likely to cause confusion. The Registrar came to the conclusion that there is no doubt that obviously the goods are of the same description. He also took note of the fact that the petitioners use of their registered Trade Mark is in respect of "ayurvedic preparations". It is also an admitted position that these ayurvedic medicines are easily available across the counter without a doctors description and consumed by all classes of people. In this connection, Mr.. Tulzapurkar drew my attention to the case of Amritdhara Pharmacy v. Satya Deo, A.I.R. 1963 Supreme Court 449. He submitted that the question had to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man whether the overall structural and phonetic similarity of the two names would cause confusion or not, is the question that will have to be determined by the Court. In the supreme Court case that the words in question were two names, namely, "AMRITDHARA" and "LASHMANDHARA" and the Court held that the similarity of the two names likely to deceive or cause conclusion. The test is as follows:

"In considering the matter, all the circumstances of the case must be considered as was observed by Parkar J. in the Re Piantist Cos Application, (1906) RPC 774, which was also a case of the comparison of two words-

"You must take the two words. You must judge them, both by their look & 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 these 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 Mark for the goods of those trade marks is used in a normal way as a Trade Mark for the goods of the respective owners of the Marks." (p.777).

For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps, an appropriate description of the state of mind of a customer who, on seeing a Mark thinks that it differs from the Mark on goods which he has previously bought, but is doubtful whether that impression is not impression is not due to imperfect recollection. (See Kerly on Trade Marks, 8th edition. P. 400)."

Mr. Tulzapurkar submitted that if this test is applied to the present case, there is every likelihood of deception or confusion in the mind of the customer and, if that is so, the respondents Mark could not have been registered. He also relied on the case of M/s. Hiralal Parbhudas v. Ganesh Trading Co. AIR 1984 Bombay, 218.

The Registrar was influenced by the fact that the word "HEPA" is used in the Trade by several manufacturers and in his order he has set out about 9 names. Mr. Desai also pointed out from the said Indian Pharmaceutical Guide to say that there are some more products with he said prefix "HEPA" all in respect of pharmaceutical preparations. The argument is that the word "HEPA". Is used in relation to various pharmaceutical preparations and that, therefore, the petitioners could not have objected to the said registration.

Mr. Tulzapurkar cited the case of Corn Products v Shangrila Food Products, AIR 1960 Supreme Court 142. He submitted that it is not enough to mention the names of certain products. There should be evidence before the registrar that there is an extensive user of the said prefix "HEPA" and that this Mark had acquired reputation by user in the market. The relevant portion in this behalf is as follows:

"Where there are a "series" of Marks, registered or unregistered, having a common feature or a common syllable, if the marks in the series are owned by different persons, this tends assist the applicant for a mark containing the common feature. This statement of the law in Kerlys book is based on in re: an application by Beck, Koller and Co. (England) Ltd. (1947) R.P.C. 76. It is clear however from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his Mark also, he has to prove that these Marks had acquired a reputation by user in the market."

"the series of Marks containing the common element or elements therefore only assist the applicants when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those Marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of Marks with the common elements. What had happened was that the Deputy Registrar looked into his register and found there a large number of Marks which had either "Gluco" or "Vita" as prefix and suffix in it. Now of course the presence of a Mark in the register does to prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the Marks on the registered. If any authority on this question is considered necessary, references may be made to Kerly p. 507 & Wilesdem Varnish Co. Ltd. v. Young & Marten Ltd. (1922) 39 RPC 285 at p. 289".

Mr. Tulzapurkar submitted that the onus of proving such user is, of course, on the applicants who wants to rely on those Marks. In the present case, the Applicants/respondents led no evidence as to the user of Marks with the common element. The learned Registrar just took note of those products and apparently was satisfied with the same but I am afraid that in the absence of any evidence of extensive user of those products it is not permissible to draw any inference as to their user from the presence of the Marks on the Register.

Mr. Desai submitted that there is no likelihood of any confusion in he present case. He relied on certain English cases, firstly on the case of Re Bayer Products Ltd.s Application, 1947-Vol. II. All England Law Reports, 188. In that case, the application for registration of the Mark "DIASIL" in respect of sulphadiazine preparation in the class of pharmaceutical substances was resisted by the owners of the Mark "ALASIL" which was registered in respect of goods of the same description and the Court came to the conclusion that the registration of the Mark "DIASIL" was not likely "to deceive or cause confusion", between the two products. But here there is one significance distinction, namely, sulphadizine is a schedule poison and, the Pharmacy and Poison Act, 1933, and the Poison Rules, 1935, it could be supplied only by a registered pharmacist on a written prescription from a doctor. I think that should make the distinction between those goods and the goods that is before me. Mr. Desai then cited the case of Harker Stogg Limiteds Trade Mark, (1954) 7 RPC 136. Here the proprietors of the registered mark "ALUDROX" applied to be Registrar for cancellation of a later registration of "Algelox" for substantially the same goods. The Court held that testing the matter, according to the principles applicable to Section 12, the similarity was not great enough to be likely to cause confusion.

I think the tests which are applicable in this case are the following:

(a) What is the main idea or salient features of the products(b) The marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection.

(c) The over-all structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied.

(d) The purchaser is likely to be put in a state of wonderment,

(e) In addition, the Court must take into consideration the nature of the commodity, the class of purchasers the mode of purchase and other surrounding circumstances. If these well established principles are kept in the forefront, the petitioners must succeeds in this petition. I am of the view that the respondents label would in any event cause confusion amongst the persons of average intelligence an imperfect recollection. Both the products are ayurvedic products and they are sold in the form of syrup and the dissimilarity is so slender that the purchasers would certainly be put in a state of wonderment. I think that if these tests had been applied the Registrar could not have registration of the respondents Mark at all.