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Smart Summary

Judgment Summary — Kantawala, J.

Factual and Procedural Background

This opinion concerns a contest between an earlier-registered trade mark and an application to register a later mark. The opponents' registered mark is the word "SARIDON". The applicants sought registration of a label mark whose essential word element is "SANIRON" together with prominent letters "SCI" on a multicoloured label (the label, as proposed, also contains the word "poison" in red or against a red background in accordance with statutory labelling restrictions).

The opposition to registration was founded on sections 11(a) and 12(1) of the Trade Marks Act (the opinion reproduces the text of these sections and the definition of "deceptively similar" from s.2(d)). The Assistant Registrar had made a decision in the matter which the opponents challenged, arguing inter alia that the Assistant Registrar had erred in principle. The matter came before Kantawala, J., who reviewed the statutory tests, relevant authorities and the facts; the judgment concludes with the operative order: "Petition dismissed."

Legal Issues Presented

  1. Under section 11(a): Given the reputation of "SARIDON", whether the mark applied for ("SANIRON" as used on the applicants' label) if used normally and fairly for any goods covered by the proposed registration, would be likely to cause deception or confusion among a substantial number of persons.
  2. Under section 12(1): Assuming the opponents use "SARIDON" normally and fairly (including for pharmaceutical preparations such as injectable iron), whether there would be a likelihood of deception or confusion among a substantial number of persons if the applicants also use "SANIRON" normally and fairly in respect of the goods for which registration is sought.
  3. Whether the Assistant Registrar erred in principle in approaching the problem (as alleged by the opponents), such that the Court should re-examine the matter afresh.

Arguments of the Parties

Opponents' Arguments

  • The Assistant Registrar purportedly did not approach the problem in the correct manner and relied merely on decisions (reported and unreported) without sufficiently considering the facts of those cases and their applicability to the present facts.
  • The Assistant Registrar allegedly assessed the marks as they had been used in practice rather than strictly as they were applied for on the register.
  • He misconstrued section 12(1) of the Act and wrongly applied provisions of the Drugs Act and the rules made thereunder.
  • By those alleged errors of principle, the opponents contended the Assistant Registrar's decision should be open to review and the Court should consider the matter afresh.

The opinion does not contain a detailed, itemised account of the applicants' counter-arguments in the manner presented above for the opponents.

Table of Precedents Cited

Precedent Rule or Principle Cited For Application by the Court
In the matter of an application by Smith Hayden & Co., Ltd. (Evershed J.) Formulation of the scope of enquiry under sections analogous to ss. 11 and 12 — used as a template for posing the key questions in the present case (adapted to the marks SARIDON and SANIRON). The judge adapted a passage from Evershed J.'s judgment to frame the two central questions the Court must answer under s.11 and s.12 in this case.
In the matter of an Application by William Bailey (Birmingham) Ltd. (Farwell J.) Principle of appellate deference: a court should not lightly disturb the decision of the Registrar unless the Registrar acted on a wrong principle, omitted relevant matters, or took irrelevant matters into account. The Court recorded and applied this principle when considering whether it should disturb the Assistant Registrar's decision in the present matter; the opponents relied on this ground in arguing error of principle.
In the Matter of an Application by Bayer Products Ltd. (per Wynn-Parry, J.) Where the enquiry under s.12(1) (re deceptive resemblance) is conducted, once the tribunal answers the question "Is there likely to be confusion?" in the affirmative or leaves it in dubio, it is not open to take further matters into account to change that answer. The Court cited this authority to explain that the s.12(1) enquiry must reach a concluded answer on the likelihood of confusion and that ancillary matters cannot subsequently be invoked to negate a concluded finding of likelihood of confusion.
In the Matter of an Application by the Pianotist Company Ltd. (Lord Barker / Parker J.) List of matters to be taken into account in similarity enquiries: visual and phonetic comparison, the goods to which the marks apply, the nature of the likely customer, and all surrounding circumstances; consider normal use of each trade mark. The Court adopted these considerations as the framework for analysis and applied them step by step to compare SARIDON and SANIRON.
In the Matter of an Application by Bysta Ltd. (Luxmoore L.J.) Phonetic test: whether the sound of one word so nearly resembles another as to be likely to deceive — the assessment largely depends on first impression and the imperfect recollection of an average person. The Court applied Luxmoore L.J.'s test (as approved by the House of Lords in Aristoc v. Rysta) in judging the phonetic similarity of SARIDON and SANIRON and concluded there was no such close resemblance likely to cause confusion.
Aristoc Ltd. v. Rysta Ltd. [1945] A.C. 68 (House of Lords) Approval of Luxmoore L.J.'s approach to phonetic similarity and the emphasis on first impression and imperfect recollection. The judgment records that Luxmoore L.J.'s test was approved by the House of Lords in Aristoc v. Rysta and applies that approach to the present phonetic comparison.
In the Matter of an Application by Bayer Products Ltd. (Lord Green, M.R.) Emphasis that the likelihood of deception or confusion under s.12(1) must be assessed with reference to surrounding circumstances and not by mere comparison of words in isolation. The Court invoked this authority to underscore the need to consider the surrounding circumstances, including the nature of the goods and the likely purchasers, in the overall likelihood-of-confusion inquiry.

Court's Reasoning and Analysis

The Court proceeded by first clarifying the distinct scope of enquiry under section 11(a) and section 12(1). Section 11 focuses on whether use of the mark would be likely to deceive or cause confusion (consequences of use). Section 12(1) addresses registration conflicts and, where marks are not identical, requires a comparison of the marks in relation to the goods for which they are respectively registered or sought to be registered, taking into account surrounding circumstances.

The judge stated the burden is on the applicant (the person seeking registration) to establish that there is no real and tangible danger of confusion; conversely, the opponents' objections must be real and not fanciful. The inquiry is practical and business-oriented: hypothetical, far-fetched combinations of circumstances that have no reasonable probability in ordinary business practice are not to be the basis for refusal. If, at the conclusion, the answer to "Is deception or confusion likely to occur?" is "Yes" or remains in dubio, registration must be refused.

The Court recited the principle of deference to Registrar decisions (William Bailey), i.e., that this Court should not disturb such decisions lightly unless there was a wrong principle or improper consideration. The opponents alleged the Assistant Registrar had committed such errors of principle, which required the Court to scrutinise the matter afresh.

Applying the established multi-factor test (visual and phonetic comparison; the goods to which the marks are applied; the nature of the likely purchaser; and all surrounding circumstances), the Court analysed the marks as follows:

  • Visual comparison: The opponents' mark is the word "SARIDON" as a word mark on the register. The applicants' mark is a label mark whose essential feature is the word "SANIRON" together with prominent letters "SCI" and a multi-coloured background; statutory labelling constraints require the word "poison" to appear in red or against a red background. Given these features, and because normal and fair use of the applicants' label would include the visible "SCI" element and multi-colour presentation, the Court concluded that visually the two marks are not similar.
  • Phonetic comparison: Although both words have three syllables and share the initial syllable "SA" and the terminal syllable "-ON", the Court applied the Luxmoore L.J. test (first impression, imperfect recollection of an average person) and found it difficult to identify a phonetic similarity between "SARIDON" and "SANIRON" that would likely cause confusion. The Court concluded there was not a close or near resemblance in sound likely to deceive.
  • Customers and surrounding circumstances: The Court emphasized that the nature of the customer and surrounding commercial circumstances must be considered (citing Bayer/Lord Green). The opinion indicates the Court applied these considerations in the analysis (the fuller factual discussion was noted as not material to the report), and found on the totality of circumstances that confusion was not likely.

The Court also noted the statutory wording "deceptively similar" (s.2(d)) and reiterated that the Act does not prescribe a fixed criterion; each case depends on its particular facts and the value of authorities lies in the tests they apply rather than in mechanical transplantation of other cases' outcomes.

Holding and Implications

Petition dismissed.

Holding: The Court dismissed the petition challenging the decision (the operative order is simply recorded as "Petition dismissed"). On the reasoning set out above, the Court concluded that the applicants' mark ("SANIRON" as applied for on the label) and the opponents' registered mark ("SARIDON") were not such that confusion or deception was likely in the ordinary commercial circumstances presented in the record.

Implications: The direct consequence recorded in the opinion is the dismissal of the petition. The opinion does not state any broader or novel precedent beyond applying established principles and authorities (the judgment notes established tests from prior authorities and applies them to the facts). The Court did not indicate that it was laying down new law; rather, it applied and explained existing principles (visual/phonetic comparison, consideration of goods and customers, burden on applicants, and deference to Registrar decisions) in reaching the result.

[The report states that the remainder of the judgment was not material to the report; the summary above is confined to the material contained in the provided opinion extract.]

Show full summary ...

    F. Hoffman La Roche & Company Limited v. The Sanitex Chemical Industries Limited

    Kantawala, J.:— [His Lordship after stating the facts and evidence in the case, proceeded.] The sections on which the opposition was based, are ss. 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

    shall not be registered as a trade mark”.

    2. This section is contemplating the consequences of the use of the trade marks. 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”.

    3. The words “deceptively similar” are defined in s. 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”.

    4. 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.1 substituting the marks with which I am concerned in this case for those with which the learned Judge was concerned in the case before him: (a) under s. 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 s. 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 injectible 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.

    5. 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 s. 12(1) 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.

    6. 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.2 that:

    “The decision of the Registrar or the Assistant Registrar is one which should not be disturbed at all lightly. Prima jade 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”.

    7. It was argued on behalf of the opponents that the Assistant Registrar did not approach the problem in the right way; that he had taken merely the decisions of the cases reported and unreported without taking into consideration the facts of those cases and applied them to the present case; that the Assistant Registrar instead of taking into consideration the marks as actually applied for by the opponents, took into consideration the marks as actually used by the opponents, that he misconstrued s. 12(1), that he wrongly applied the provisions of the drugs act and the rules made thereunder and that he has, therefore, erred on a matter of principle and in consequence, I am in a position to consider the matter afresh.

    8. In view of this argument, it is necessary to consider the true construction of s. 12(1). Section 12(1) deals with two types of cases. The first type of cases is that no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. There is an absolute bar of registration of two identical trade marks. It requires that the two marks under consideration should be compared. If the two marks under consideration, that is, the mark of which registration is sought and the mark which is already registered are identical, the registration must be refused. It is not then permissible to proceed to consider whether notwithstanding the circumstances that the marks are identical, the manner of intended user of the mark applied for would justify allowing the registration in respect of some limited class of goods. The second type of cases dealt with by the section are those in which it is necessarily postulated that the two marks under consideration are not identical. Here the enquiry is not limited to the comparison of two marks but involves a comparison of the two marks in relation, as regards the existing mark, to the goods in respect of which the marks are registered and in relation as regards the proposed mark, the goods in respect of which registration is applied for. In the conduct of this enquiry, the surrounding circumstances properly to be taken into account must be considered. When the marks have been considered in relation to the goods, in the light of the surrounding circumstances, the question must be answered: “Is there likely to be confusion or deception if the application is granted?” When the question is answered, the enquiry under the section is concluded for all purposes and if the answer to the question is either in the affirmative or that the matter remains in dubio, it is incompetent to the tribunal to take into account any further matter in order to consider whether, in the light of those matters, the probability of confusion would be removed and thus the answer already given might be otherwise. See In the Matter of an Application by Bayer Products, Ld.3, per Wynn-Parry, J. at p. 131.

    9. It is not disputed before me that the goods in respect of which the opponents' mark is registered and the applicants' mark is applied for registration are the same or of the same description. It is also not disputed that the two marks are not identical.

    10. It will be noticed that the words used in the section relevant for the purpose are “deceptively similar”, that is, likely to deceive or cause confusion. The Act does not lay down any criterion for determining what is likely to deceive or cause confusion. Every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the register, if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by the traders in that market. In considering the matter, all the circumstances of the case must be considered.

    11. The matters which are to be taken into consideration were stated by Lord Barker (then Parker J.) in In the Hatter of an Application by the Pianotist Company Ld.4, where he said:

    “…You must take the two words. You must judge of them, both by their look and by their sound. You must consider the foods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further 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. If, considering all those circumstances, you come to the conclusion that there will be a confusion—that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be confusion in the mind of the public which will lead to confusion in the goods—then you may refuse the registration, or rather you must refuse the registration in that case”.

    12. It is necessary to apply each of these considerations in the present case. So far as visual comparison is concerned, one has to compare the opponents' mark as actually appearing on the register and the applicants' mark as applied for registration. The mark of the opponents as registered is the word “SARIDON” per se, while the applicants' mark as applied for registration is not the word mark but is a label mark. The essential feature of the applicants' mark consists of the word “SANIRON” along with the letters SCI appearing very prominently on a label in a multi coloured background. In view of the statutory restrictions in respect of the labelling of the mark, which I will hereinafter refer to in some detail, the word “poison” appears in red or against red background. The label of the applicants in a normal and fair user of the mark, must be a multicoloured one and in any visual comparison of the mark, the presence of the letters SCI in bold letters cannot be ignored. In my opinion, visually, the two marks are not similar.

    13. It was, however, argued that the essential feature or at least the feature by which the applicants' mark will be asked for is SANIRON. Both the words SANIRON and SARIDON are the words of three syllables and both the words begin with syllable SA and end with the syllable On. In the middle portion in one case it is NIR and in the other it is RID. In written order the letter ‘N’ in the word “SANI” and the letter ‘R’ in the word “SARI” especially since both the words are followed by the letter ‘I’ are likely to be written alike and there is a great chance of confusion.

    14. It is true that in the two words “SARIDON” and “SANIRON” there are common syllables. But, taken as a whole there is no overall similarity so as to cause confusion. Judging the two words by their sound, the test to be applied in such cases, is the one that is laid down by Luxmoore L.J In the Matter of an Application by Bysta Ld.5 and which is approved by the House of Lords in appeal in Aristoc, Ld. v. Rysta, Ld. . [1945] A.C 68. At p. 108, Luxmoore L.J said:—

    “The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous, comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

    The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants”.

    15. In approaching the question whether the sound of one word resembles too nearly the sound of another, from the point of view of a man of average intelligence and imperfect recollection, it is difficult to find phonetic similarity between the two words SARIDON and SANIRON. Judging the two words by their sound I do not find that there is such a close and near resemblance between them as is likely to cause confusion.

    16. The next thing is to consider the nature and the kind of the customer who would be likely to buy the respective goods and the surrounding circumstances. In the Matter of an Application by Bayer Products Ld., Lord Green, M.R, emphasised the importance of this consideration in the following words (p. 137):

    “The question whether there is likelihood of deception or confusion cannot be considered under Sec. 12(1), without reference to surrounding circumstances; in other words, the Court is not confined merely to looking at the Register and comparing the two marks as words in the English language or some invented language; it has to consider to what extent, in all the circumstances, deception or confusion is likely.”

    [The rest of the judgment is not material to this report.]

    17. Petition dismissed.

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    Comments

    F. Hoffman La Roche & Company Limited v. The Sanitex Chemical Industries Limited
    (Oct 4, 1962)