Decided on October 04,1962

F. Hoffman La Roche And Company Limited Appellant
Sanitex Chemical Industries Limited Respondents

Referred Judgements :-


Cited Judgements :-



KANTAWALA,J. - (1.)[His Lordship after stating the facts and evidence in the case, proceeded.] The sections on which the opposition was based, are Sections 11(a) and 12(1). Section 11(a) provides as follows: - 11. A mark - (a) the use of which would be likely to deceive or cause confusion; or (b) ... (c) ... (d) ... shall not be registered as a trade mark. This section is contemplating the consequences of the use of the trade marks.
(2.)SECTION 12(7) provides: - 12. (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. The words 'deceptively similar' are denned in Section 2(d) as under: - (d) 'Deceptively similar': -A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. It is necessary to have in mind at the outset the scope of the enquiry under each section. For this purpose, one cannot do better than adapt to the present case a passage in the judgment of Evershed J. in the case of In the matter of an application by Smith, Hayden & Coy., Ld. (1945) 03 R.P.C. 97 substituting the marks with which T am concerned in this case for those with which the learned Judge was concerned in the case before him: (a) under Section 11: Having regard to the reputation acquired by the name 'SARIDON', is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons; and (b) under Section 12: Assuming use by the appellants of their mark 'SARIDON' in a normal and fair manner for any of the goods covered by the registration of their mark (and including particularly goods also covered by the proposed registration of the mark 'SANIRON' i.e. pharmaceutical preparation containing iron in ingestible form) is the Court satisfied that there will be no likelihood of deception or confusion among a substantial number of persons if the applicants also use their mark SANIRON normally and fairly in respect of any goods covered by their proposed registration.
In the case of each section, the onus is upon the applicant to establish to the satisfaction of the Court that there is no real and tangible danger of confusion. On the other hand, the objections - put forward by the opponents must equally be real and not fanciful. It is not for the Court to consider imaginary and unlikely cases in order to bring Section 12(i) of the Act into operation. Even though the burden is on the applicants, their case is not to be defeated by constructing rather fantastic or far -fetched imaginary cases involving a combination of circumstances which, however possible it may be, has no reasonable probability in any business sense. The Court is not concerned with hypothetical possibilities but with the ordinary practical business probabilities having regard to the circumstances of the case. If at the conclusion of the enquiry, the answer to the question: Is deception or confusion likely to occur? is 'Yes' or if the matter remains in dubio, registration must be refused.

(3.)IT is equally made clear on the authorities as was pointed out by Farwell J. In the matter of an Application by William Bailey (Birmingham) Ld. (1935) 52 R.P.C. 138 that: The decision of the Registrar or the Assistant Registrar is one which should not, be disturbed at all lightly. Prima facie his decision should stand and, in my view, though this Court might take a different view from that which was taken by the Registrar as to the similarity or dissimilarity of the two marks or the two words, or even if this Court were to take a different view as to the effect of the evidence as a whole from that taken by the Registrar, the Court would hesitate long before reversing the decision of the Registrar on any such grounds as those. In my judgment, before this Court interferes with the decision, of the Registrar in a case of this kind it ought to be satisfied that the Registrar in arriving at his decision has acted upon some wrong principle, e.g., has not approached the problem in the right way, or has taken into consideration matters which he ought not to have taken into consideration or has omitted to take into consideration matters which were proper for consideration. Unless there are some such grounds as those for interfering with the decision of the Registrar, in my judgment that decision ought not to be disturbed.

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