Corn Products Refining Co. v. Shangrila Food Products Ltd.

Relevant Acts and provisions

Trade Marks Act, 1940

Section 10(1)Section 8(a)

Provisions considered: Sections 8(a) and 10(1) of the Trade Marks Act, 1940, on refusal of registration of deceptively similar marks.

Brief facts

Shangrila Food Products applied to register a mark for biscuits. Corn Products Refining Co., the registered proprietor of a similar mark for glucose powder with vitamins, opposed the application, contending that the marks were deceptively similar and that biscuits and glucose preparations were goods of the same description likely to be associated by the public with a common trade origin. The Deputy Registrar refused registration, but the Bombay High Court allowed it, holding the marks dissimilar and that the opponent's mark had not acquired sufficient reputation among biscuit consumers.

Issues before the Court

1. Are the competing marks deceptively similar so as to bar registration under Section 10(1) of the Trade Marks Act, 1940?
2. Are other marks on the register sharing a common prefix relevant to assessing similarity?
3. Should the public's likely association of a common trade source weigh in the assessment?

Court's findings

The Court held that the High Court had erred in finding that the opponent's mark had not acquired a reputation among the general buying public, and that reputation attaches to the trade mark itself rather than requiring the buyer to know the identity of the manufacturer; what matters is whether the purchasing public associates the mark with a particular trade source, not whether it can name that source.

The Court held that the two marks were phonetically and visually similar, and that glucose preparations and biscuits, while not identical goods, were of a kind that could reasonably be regarded as of the same description for trade mark purposes, given their food character and potential overlap in trade channels.

The Court observed that the existence of other marks on the register sharing a common element was of no assistance to the applicant unless those other marks had themselves acquired an independent reputation in the market, and found a reasonable probability of confusion or deception if registration were permitted.

Decision

Appeal allowed; the High Court order was set aside and the Deputy Registrar's order refusing registration was restored.

Keywords

Deceptive Similarity Goods Of Same Description Opposition Reputation Of Mark Trade Connection