Sabyasachi Mukharji, J. - (1.) This is an appeal from the decision of the Deputy Registrar of Trade Marks dated 24th of Feb., 1975 Whereby the Deputy Registrar has refused the application of the appellant for registration. It appears that on the 24th of March, 1969 the appellant made an application being application No. 255595 to register in Part A of the Register a trade mark consisting of a label containing mainly the devices of four kites in a double-lined circle and the words "CHAR GUDDI ASLI KEORA JAL" in Devana-gari, Urdu and Bengali characters and "CHAR GUDDI KEORA WATER" in Roman characters, also the devices of keora flowers on the left and right-hand sides of the label and the name and address of the applicants in Class 3 in respect of a specification of goods which was subsequently amended to read as "Keora water (perfumery)". There was objection to the registration of the said mark on the ground that the said claim conflicted with Registered Trade Marks Nos. 163808, 189857 and 189856 under the provisions of Section 12(1) of the Trade and Merchandise Marks Act, 1958. The appellants agreed to amend the mark at the hearing of the application and the application was advertised. On the 20th of Aug., 1973 Md. Abbas Ansari, the respondent No. 3 herein trading as Gazipur Star Chemical Works of Calcutta filed a notice of opposition to the registration of the aforesaid trade mark on the grounds mainly based on the provisions of Sections 11(a) and 12(1) of the said Act. On the 12th of Nov., 1973 the applicants filed their counter statement denying all the allegations made in the notice of opposition. Evidence in support of the opposition consisted of an affidavit by one Abbas Ansari the opponent himself. The evidence in support of the application consisted of an affidavit by a partner of the applicant firm. The evidence in reply consisted of another affidavit by the said partner. The matter was thereafter heard by the Deputy Registrar. Before the hearing there was a request made on the part of the appellant for correction of the application to read that the user has been since Jan., 1968. Originally the statement given in the application was to read as "proposed to be used." As the application was advertised in the Trade Marks Journal as proposed to be used and inasmuch as according to the Deputy Registrar the application for amendment was to obviate the objection of the Registry under Section 12(1) of the Act accordingly the prayer for amendment of the period of user was refused by the Deputy Registrar. The appellants were seeking registration of a composite label consisting of the devices of four kites in double-lined circle, the words "Char Guddi Asli Keora Water" and the devices of Keora flowers and the trading style and the address of the applicants. As mentioned hereinbefore the registration was sought in Class 3 in respect of "Keora water (perfumery)" and the mark was proposed to be used. There is also no dispute that the opponent being the respondent No. 3 herein was holding registration in respect, of a label mark containing of devices of heart, club, diamond and spade within a circle and also the words "Tekka Asli Golab Nirjas". The said registered marks were 189856, 189857 and 163803 all in Class 3 and another being 190671 in Class 5.
(2.) The Deputy Registrar has refused the appellant's claim both under Section 11 (a) and Section 12(1) of the Act. Under Section 11(a) of the Trade and Merchandise Marks Act, 1958 there is the restriction or prohibition of mark the use of which was likely to deceive or cause confusion. Under Section 12 (1) of the said Act in respect of the same goods or description of the goods if there is an existing trade mark in favour of another proprietor then any mark which is identical with or deceptively similar to that mark cannot be permitted registration in favour of a different proprietor. Under Section 12(1) of the Act two conditions are necessary to bring an application within the mischief of that section and these are (1) the mark applied for should be either identical or deceptively similar to the existing registered trade mark and (2) that the goods for which registration is ought should be either the same or of the same description as those of the already registered trade mark. In view of the types of the goods namely that the applicant was seeking registration in respect of keora water in Class 3 and the opponent was holding registration in respect of Keora water (perfumery) by the Registered Trade Mark No. 189856 and was also holding registration in respect of Extract of rose (perfumery) by the Trade Mark No. 189857 and Trade Mark No. 163808 and extract of rose for eye diseases by Trade Mark No. 190671, the Deputy Registrar was of the view that though the goods were not identical these could be considered to be goods of the same description. In my opinion the Deputy Registrar was justified in coming to the said conclusion. Therefore, one of the conditions required to be fulfilled for coming within the mischief of Section 12(1) of the said Act was fulfilled. This position was also not seriously disputed before me.
(3.) The next aspect which requires consideration is the question whether the marks were identical or deceptively similar to each other. In this connection there are certain well settled principles in trade mark laws which may conveniently be reiterated. Very often I find in these matters there is hardly any dispute as to the principles but their application to the particular facts sometimes cause little confusion. Counsel for the appellant stressed before me that in order to consider whether the two marks were Identical or deceptively similar under Section 12(1) or even for the purpose of considering whether the mark was likely to cause confusion or to deceive people it is necessary to consider the persons who are the customers; it is also important to bear in mind the amount of resemblances between the two marks taken as a whole but bearing in mind the essential particulars of each mark. He also emphasised that both the effect on ear and eye should be borne in mind and colour of the different marks is also important. In this connection my attention was drawn to certain passages in Kerly's Law on Trade Marks & Trade Names 10th Ed. where at page 453 the learned editors have emphasised that it is necessary to consider whom the mark must be calculated to deceive. It is, then, necessary to bear in mind what amount of resemblance is likely to deceive or cause confusion and as was observed in one of the leading cases that what degree of resemblance is necessary is from the nature of things incapable of definition a priori. As was emphasised by Mr. Justice Parker in the case of Pianotist Ltd's Appn. (1906) 23 RFC 774 at p. 777 that one must take the two words and one must judge them both by their look and by their sound. One should consider the goods to which they are to be applied and should bear in mind the nature and kind of customers who would be likely to buy the goods. In fact it is necessary to consider the surrounding circumstances and then consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. My attention was drawn to Certain observations appearing at pages 453 of the said book and at page 465 where the learned editors emphasised that the whole picture of each mark has to be considered. Reliance was also placed on the observations appearing at page 468 of the said book where the importance to both ear and eye has been emphasised by the learned editors. Counsel also drew my at ention to the passage at page 470 of the said book to emphasise that colour is also an important element.;