- (1.) This is an appeal by special leave granted by this Court on December 8, 1958. On July 19,1950, Satya Deo Gupta, respondent before us, made an application under S. 14 of the Trade Marks Act, 1940 (Act V of 1940) (hereinafter referred to as Act) for the registration of the trade name of a biochemical medicinal preparation, commonly known as 'Lakshmandhara', in Class 5 of the Fourth Schedule to the Trade Marks Rules, 1942. The application was made by the respondent as the sole proprietor of Rup Bilas Company situate at Dhankutti in Kanpur. The averments made in the application were that the said medicinal preparation had been in use by the name of Lakshmandhara' since 1923 and was sold throughout the length and breadth of indict as also in some foreign markets; the mark or name 'Lakshmandhara' was said to be distinctive to the article, and it was stated that the approximate annual turnover was Rs. 40,000/- Notice of application was given by the Registrar of Trade Marks, Bombay, and the Amritdhara Pharmacy, a limited liability company and appellant before us, filed an application in opposition. In this application the appellant stated that the word 'Amritdhara was already registered as trade name for the medicinal preparation of the appellant, and that medicinal preparation was introducted in the market so far back as in the year 1901; on account of its great popularity many people advertised similar medicines with slight varitions of name to pass off their goods as 'Amritdhara': It was averred that the composite word 'Lakshmandhara' was used to denote the same medicine as 'Amritdhara' and the single word 'dhara', it was stated was first used in conjuction with 'Amritdhara' to denote the medicine of the appellant and the medicine 'Lakshmandhara' being of the same nature and quality could be easily passed off as 'Amritdhara' to the Ultimate purchaser. The appellant contended that as 'Amritdhara, was already registered and 'Lakshmandhara' being a similar name was likely to deceive the public, registration should be refused.
(2.) On behalf of the respondent a counter-affidavit was made in which it was stated that 'Amritdhara' and 'Lakshmandhara' were two distinctly different names and no one could pass of one for the other. It was further stated that during the long period of introduction and sale of 'Lakshmandhara' since 1923, no objection was ever raised from any quarter, from the appellant or anybody, else, to the use of the name 'Lakshmandhara'. It was denied by the respondent that the composite word 'Lakshmandhara' was likely to deceive the public or could by any stretch of imagination be taken or mistaken for 'Amritdhara.' The respondent further alleged that the single word 'dhara' had no particular significance in relation to the medicine, nor did that word mean or convey any special or exclusive meaning or effect in relation to the medicine. It was also stated that apart from the difference in name, the phial, label and packing of 'Lakshmandhara had exclusive designs of their own and were not likely to be confused with any other medicine of similar nature, least of all with 'Amritdhara' whose packing was distinctly different in colour, design and layout.
(3.) The Registrar of Trade Marks dealt with the application and the opposition there to by his order dated September 10, 1953. It appears that apart from the affidavits filed, no other evidence was led on behalf or either party, but certified copies of certain decisions in earlier cases (to which the respondent was not, however, a party) given in favour of the appellant in support of its claim of infringement of its registered trade mark 'Amritdhara' were filed. A list of such cases has been printed as annexure 'A'. These cases showed that a number of medicines with the word 'Amrit' or 'dhara' as part of their names had been introduced in the market since 1947, and the appellant successfully took action against them for infringement of its trade mark. Even in the Trade Marks Registry the appellant successfully opposed the Introduction of names which contained the word 'dhara' as part of the trade name. A question has been raised before us whether the Registrar of Trade Marks was justified in tarring into consideration the decisions in those cases. To that question we shall advert later. The Registrar found that in 1901 Pandit Thakur Datta Sharma commenced to do business at Lahore in a particular ayurvedic medicine which was meant for alleviation of headaches, diarrohea, constipation and other complaints. This medicine was first sold under the mark 'Amrit Ki Dhara', but in 1903 the name was changed to 'Amritdhara'. Pandit Thakur Datta Sharma formed a limited liability company in 1942 and the name 'Amritdhara' be came a well-known popular name for the medicine. The sale of the medicine went up to about Rs. 4 lacs a year. The business was done in Lahore but when partition came in 1947, the appellant established its business in Deharadun. The Registrar expressed the view that if the matter had rested on S. 8 and S. 10 (1) of the Act, he would have no hesitation in allowing the opposition and dismissing the application. This could only mean that the Registrar was of the view that the name 'Lakshmandhara' so nearly resembled the trade mark 'Amritdhara' that it was likely to deceive the public or cause confusion to the trade. We are saying this because the High Court thought that the Registrar did not express his own opinion whether the name 'Lakshmandhara' was likely to cause deception to tie public or confusion to the trade. The respondent, however, relied also on two other circumstances, viz., (a) honest concurrent rent user of the name 'Lakshmandhara' since 1923, and (b) acquiescence on the Part of the appellant in the user of the name 'Lakshmandhara.' The respondent contended that these two circumstances brought the case within the meaning of 'special circumstances' in S. 10 (2) of the Act, which permitted the registration by more than one proprietor of trade marks which are identical or nearly resemble each other, subject to such conditions and limitations, if any, as the Registrar might think fit to impose, on the point of honest concurrent user the Registrar found in favour of the appellant. As to acquiescence he, however, found in favour of the respondent and expressed his finding in these words: "In the case before me it is not disputed that the applicant commenced his user in a small way in 1923 and it may even be said that up to about 1942 the applicant's user was insignificant. In paragraph 12 of the applicants affidavit dated the 30th March, 1953, he has given details of advertisements in directories, pamphlets, newspapers etc. in which both the applicant's and the opponent's marks were advertised. The facts given in the affidavit go to show that from 1938 right up to the date of the application by the applicant he has been advertising through mediums which were common to both the applicant and the opponents. Here we have a case in which Pandit Thakur Datta Sharma states that he bad no notice of the applicant's mark. He has, however, admitted that he had about 12 persons in his factory which constituted the clerical staff and amongst them were persons who were in charge of advertising the opponent's mark. It seems to me that the opponents and their agents were well aware of the advertisements by the applicant and did not raise any protest till the applicant's mark was advertised in the Trade Mark Journal. In other words the opponents stood by and allowed the applicant to develop his business and as I have shown, from small beginning he began to sell these medicines to the extent of about Rs. 43,000/- in 1949. In my opinion, this is acquiescence which would come under the phrase or other special circumstances in S. 10(2) of the Trade Marks Act and that appears to me to be fatal to the case of the opponents." Before the Registrar it was admitted on behalf of the respondent that his goods were sold mainly in Uttar Pradesh and there were, at the most, only sporadic sales in other States. Taking that circumstance into consideration the Registrar passed an order allowing registration of 'Lakshmandhara' for sale in the State of Uttar Pradesh only.;