Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories

Relevant Acts and provisions

Trade Marks Act, 1940

Section 10(2)Section 21Section 6(1)(d)Section 6(3)

Provisions considered: Sections 6(1)(d), 6(3), 10(2) and 21 of the Trade Marks Act, 1940.

Brief facts

Navaratna Pharmaceutical Laboratories had used and registered the mark Navaratna for ayurvedic pharmaceutical preparations since the 1920s. The appellant began using Navaratna Kalpa for similar ayurvedic products and applied for its registration, which the respondent opposed. The respondent thereafter sued for an injunction restraining infringement of its registered mark and for passing off, while the appellant sought rectification of the respondent's registration on the ground that Navaratna was a common descriptive Sanskrit word incapable of exclusive appropriation.

Issues before the Court

1. Was Navaratna validly registrable despite being a common descriptive word?
2. Is the test for infringement of a registered mark the same as the test for passing off?
3. Can differences in get-up, packaging or trade dress defeat a claim of statutory infringement?

Court's findings

The Court held that although Navaratna was an ordinary Sanskrit word, it had through long and continuous use acquired a factual distinctiveness associating it exclusively with the respondent's goods, justifying its registration, and that the appellant's mark was deceptively similar to it for the purposes of infringement.

The Court drew a fundamental distinction between an action for infringement of a registered trade mark and an action for passing off. Infringement is a statutory remedy conferring on the registered proprietor an exclusive right to use the mark, so that once deceptive similarity between the offending mark and the registered mark is established, the defendant cannot escape liability by pointing to differences in get-up, packing, labelling or other surrounding matter, since the use of the mark itself is the wrong.

Passing off, by contrast, is a common law action in the nature of deceit, in which the get-up, packing and other features of the defendant's goods are highly relevant to whether the defendant has misrepresented its goods as those of the plaintiff. The Court accordingly found no inconsistency in granting an injunction for infringement while declining relief in passing off on the same facts.

Decision

Appeal dismissed; injunction restraining the appellant from using Navaratna or deceptively similar marks confirmed.

Keywords

Acquired Distinctiveness Deceptive Similarity Descriptive Marks Infringement Passing Off